Recent Case Law from the EU General Court on Trade Marks (Dec 2015-Sept 2016)

This e-presentation offers an overview of recent judgments on trademarks from the General Court. It raises important issues tackled by GC related to trade mark distinctiveness and the influence of an already existing reputation or a specific geographical origin on a trade mark.

Andrej Stec

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Standard version

This version of the e-presentation allows you to jump back and forward to the section of most interest.
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Certified version

This version requires you to view the full e-presentation and to take a short quiz at the end. A certificate can then be issued entitling you to CPD points in selected jurisdictions.

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Question 1 of 3

**Question 1: According to the General Court in Puma SE/EUIPO –Gemma srl. the assessment of whether there was harm, for the purposes of Article 8 (5) of Regulation No 207/2009:**

Can be based on the assumption of a reputation of the mark.

Cannot be based on the sole assumption of reputation of a mark because this would not be sufficient.

Is not connected to the reputation of the earlier mark.

Question 2 of 3

**Question 2: In the Neuschwanstein-Case the General Court considers:**

That the TM "Neuschwanstein" cannot be considered the as a description to the place of origin of the labeled products because it might be possible to geographically located the castle but it does not constitute a geographical place in the meaning of the Regulation.

That the geographical location of a symbol/name for a TM must not necessarily describe the place of origin of the products it is known for.

The fact that the products commercialized under the TM are not produced in the castle "Neuschwanstein" does not influences the validity of the TM.

Question 3 of 3

Question 3: Does the BoA of the EUIPO has the competence to decide on all the products of the application for a trademark if such is partially accepted but in other parts refused on absolute grounds by the examiner?

Yes, if an appeal is filed, the BoA has the competence to reexamine the whole application for the trademark, not only the parts which were not accepted. .

No, the GC concluded in its judgment of T-381/13 that appeals from the decisions of the examiners to the Board of Appeal concerns only the part of the decision adversely affecting the party.

The range of competence of the BoA differs from Appeal to Appeal.