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“Big fail” for “Big Mac”: McDonald’s lost its rights to the EU trade mark “Big Mac“

Intellectual property - April 16, 2019

Launched in Pittsburgh in 1967, Big Mac has established itself worldwide as one of the most popular and iconic Mac Donald’s products. However, on January 11, 2019, the European Union Intellectual Property Office (EUIPO) made an order for revocation of the European trademark “Big Mac” for non-use. This trademark was registered in classes 29 (prepared foods in particular), […]

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Matal v. Tam (About the trademark registration “The slants”) – A Win for the Freedom of Speech

Intellectual property - July 20, 2018

In June 2017, the United States Supreme Court delivered the much-anticipated decision Matal v. Tam (137 S. Ct. 1744 (2017)), a trademark case that addressed the issue whether a presumably disparaging trademark can be federally registered. The Court reached a verdict (and received large media attention) stating that a disparaging trademark actually can be registered, […]

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Commercial success of a product is not sufficient to prove the reputation of a trademark

Intellectual property - April 12, 2018

In a decision dated of March 9, 2018 (16/24260), the Paris Court of appeal examined a trademark law dispute related to popular French cookies having the form of long sticks coated almost entirely with chocolate. Two three-dimensional trademarks that belong to the company “Générale Biscuit Glico France ”(Glico), which sells these biscuits under the name […]

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A delicious decision? About the maintain of the protection for Ritter Sport’s square shape mark

Intellectual property - December 18, 2017

On October 18, 2017, the German Federal Supreme Court cancelled two previous decisions rendered by the German Federal Patent Court and held the protection as three dimensional trademarks for Ritter Sport’s square-shaped chocolate packaging. In 1993, Ritter Sport obtained a trademark protection for a neutral square packaging. A competitor, the Milka company (now part of […]

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Unitary character of a EUTM and peaceful coexistence in the EU territory

Intellectual property - October 24, 2017

In a decision dated of 07.20.2017 (Case C-93/16), the Court of Justice of the European Union (CJEU) took position about the principle of the unitary character of the European trademark (EUTM). This rule, laid down in recital 3 and article 1§2 of Regulation n°207/2009, means that a EUTM has a uniform protection and produces its […]

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No risk of confusion, no injunction! Precisions about the appropriate territorial scope of EU trademark injunctions

Intellectual property - March 15, 2017

On 22 September 2016, the Court of Justice of the European Union (CJEU) handed down an important decision in which it stated that an EU trade mark has to be considered as infringed only for the part of the EU where a likelihood of confusion exists. A German company, combit Software GmbH, submitted proceedings to […]

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About the validity of the European union trademark “Neuschwanstein”

Intellectual property - October 4, 2016

It symbolizes the fairytale part of romantic Bavaria but is also the subject of legal disputes. On July 05, 2016, the General Court (EGC) of the European Union stated that the trademark about the designation “NEUSCWHANSTEIN” remained valid throughout the whole European Union. (Case T 167-15). The Court dismissed the invalidity claim filed by the […]

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Ways of making you laugh

Intellectual property - October 21, 2014

The exception for parody – a now clearly outlined notion? Based on a case decided on September 3rd 2014 by the Court of Justice of the European Union (case 201/13, Vandersteen c/ Deckmyn – Vrijheidsfonds), judges were invited to further determine what is commonly qualified as “parody” in the sense of article 5 of Directive […]

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Extension of the fighting field

Intellectual property - April 16, 2014

Introduction, in France, of Law n°2014-315 of March 11th, 2014 reinforcing the fight against counterfeiting On February 26th, 2014, following an accelerated procedure initiated on October 2nd, 2013 by the French Government, on a second and final reading, the Senate unanimously adopted a law aiming the reinforcement and the clarification of certain points of the […]

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The War of the Roses

Intellectual property - December 19, 2013

In the context of a dispute opposing Dutch, British and French companies, the French Supreme Court’s commercial chamber handed down a ruling on September 24th 2013 (appeal n°11-23548). Ruling on referral after a first partial ruling dated March 3rd 2009, the decision clarified two aspects of international trademark protection. One clarification dealt with the conditions […]

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