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Trade marks: registry review – March 2015

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11/03/2015

Husky [1]

The EU General Court has upheld the Board of Appeal’s decision rejecting the applicant for revocation’s argument that various requests for an extension of time for filing evidence had been granted in error as they had been granted without the applicant’s consent. The General Court confirmed that OHIM could – but was not obliged – to seek consent to such an extension. Where it did not do so, it was obliged to take into consideration all the circumstances surrounding the request for an extension.

Red bull [2]

The EU General Court has upheld an earlier opposition decision for registration of the mark BULLDOG based on the earlier work mark BULL for identical goods.

The Court considered that most non-English speakers would not be familiar with the term “Bull”, and that in England there was a certain association between the two animals, as bulldogs had been bred originally in order to participate bull-baiting.

As the marks were similar and the goods were identical, the Court found there was a likelihood of confusion and annulled the Board of Appeal’s decision to dismiss the opposition.

Wolf’s head (fig.) [3]

On a re-hearing of a case referred to it by the European Court of Justice, the EU General Court has dismissed an opposition based on dilution and free-riding. The opponent owned a number of figurative marks depicting a wolf’s head which were registered in respect of gardening products. The applicant was seeking to register a similar image of a wolf’s head in respect of professional wood and green waste processing machines.

Despite the strong visual similarity the opposition was rejected in its entirety as the opponent had failed to show that the contested mark would take unfair advantage of or be detrimental to the earlier mark.

Wine-book (fig.) [4]

Facebook, Inc has successfully opposed the registration of the figurative mark WINE-BOOK in Classes 9 and 42.

The Opposition Division concluded that there was sufficient similarity between the marks for relevant consumers to establish a mental connection between them and that there was a high probability that the applicant’s mark would take unfair of the distinctive character or repute of the FACEBOOK mark.

It remains to be seen whether this decision, which has attracted some criticism, will be appealed.

Top tips

With the rapid growth in popularity of 3D printing, designers who have not yet done so should consider registering their designs to protect against unauthorised copying.

The Registered Designs Act 1949 provides a regime for the protection of designs against copying by third parties. More specifically, it states that registration of a product protects the “appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation”.

The component parts of a complex product can only be protected as a registered design if they are visible and are of a novel and industrial design. Designs that are dictated by their technical function cannot be protected as registered designs, nor where the features of appearance of a product must be reproduced in the form they are in order to fit with a product to which they are connected or in which they are incorporated.

It is not always easy to tell whether a design will be capable of protection as a registered design. Please contact us for advice on whether your design may be capable of protection as a registered design.

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[1] Case T-287/13 Husky CZ sro v OHIM
[2] Case T-78/13 Red Bull GmbH v OHIM
[3] Case T-570/10 Environmental Marketing Ltd v OHIM
[4] Facebook Inc v Collector Consulting, Opposition No B 2 035 510