The article is published as part of the Team's Carousel of Fame project, which covers Article 8(5) of the EUTM Regulation and the taking unfair advantage of famous marks.
The Zara case concerned an opposition filed against Inditex's EUTM application for ZARA for goods and services in classes 29 to 32, 35 and 43. The decision shows that any claim that the contested mark has acquired reputation through its use, where such use as a fact precedes the filing of the contested mark, is not taken into account and is therefore considered irrelevant.
The article discusses how this approach compares to cases involving applications for the names of famous people or celebrities.
The Chanel case, which concerned Huawei's EUTM application for a figurative sign for two interlocking elements in class 9, sheds light on how the existence of the required link between two signs must be assessed, when an opposition is based on the claimed reputation of an earlier mark.
The Court said that the comparison between the signs must be based solely on the form under which the earlier sign has been registered, not taking into consideration potential alterations (e.g. rotation) made in the context of its use in commerce.
You can read the article, which is written by Team member Stefanos Tsimikalis of Tsimikalis Kalonarou Law Firm, on the Team's page, where you can also find other publications in the Carousel of Fame project (MARQUES log-in required).
Image taken from CJEU website
Issue 144
During 2022, MARQUES returned to fully in-person meetings for the first time in three years, developed its online activities with new webinars and podcasts, and took part in meetings with WIPO, EUIPO and other organisations
The MARQUES Spring Team Meeting will be held in Frankfurt on 2 and 3 March 2023. Council and Team members will receive invitations to attend in early January
The MARQUES Anti-Counterfeiting and Parallel Trade Team has formed a sub-group to obtain clarification on the mandatory Customs recordal system that has been introduced in Kenya. The deadline of 1 January 2023 is the date on which IP rights have to be recorded to comply with the local legislation
We look forward to welcoming you to in-person and online events in 2023. Mark the dates in your calendars now
A new article by the MARQUES Unfair Competition Team reviews two decisions of the EU General Court: Zara (T-467/20) and Chanel (T-44/20)
EUIPO has published a new enforcement report and new rules on submitting evidence, as well as the latest issue of Alicante News
OAPI has joined the Lisbon Agreement; WIPO took part in a COVID-19 Symposium; and where to download the latest IP data
The European Commission adopted proposals for a revised Regulation and Directive on designs on 28 November
MARQUES wishes all members, their colleagues and families, best wishes for the festive season
Recent posts on the MARQUES blogs include: