Brand watch

07 May 2015

Sara Nielsen, Zain Ali

A snapshot of what’s happening in the world of trade mark law and recent topical decisions.

Je suis Charlie - OHIM responds to speculative trade mark applications

The Community Trade Mark Office (OHIM) has issued a statement in relation to the controversial trade mark applications for the rallying slogan "Je suis Charlie". The first trade mark application covered Benelux and was made less than 24 hours after the tragic events in Paris. The application covered goods spanning from cleaning and toilet preparations to clothing.

OHIM explained that according to its Guidelines on Community Trade Marks, an application which consisted of or which contained the phrase "Je suis Charlie" is likely to be subject to an objection under Article 7(1)(f ) as the registration could be considered "contrary to public policy or to accepted principles of morality" as well as "devoid of distinctive character" under Article 7(1)(b).

Generally OHIM does not comment on individual applications but it made an exception in this case because the issue could be considered to be of overriding public interest.

OHIM Fast Track trade mark procedure proves successful

The new Fast Track service offered by OHIM cuts the time taken to publish Community Trade Mark applications by half. The accelerated service was launched in late November 2014 and according to OHIM, 21.5% of all CTM applications during the first week of its operation opted for the accelerated route.

The service is available free of charge to applicants who comply with certain conditions determined by a five-step online form. The goods and services for the specification can only be selected from the Common Harmonised Database of Goods and Services which is already accepted by OHIM and virtually all national IP offices in the EU.

Puzzling proceedings resolved with Rubik’s Cube 3D trade mark upheld

In 2006 Simba Toys challenged the registration of the Rubik’s Cube as a three dimensional Community Trade Mark, arguing that its shape was based on technical function and so not registrable. This argument was rejected by OHIM, resulting in an appeal. The General Court ruled that the grid-like structure with nine squares separated by a black border was capable of being represented graphically and was sufficiently distinctive. The technical function allowing the cube to rotate was a separate invisible feature and was therefore not an essential characteristic of the mark.

Furthermore, the mark does not prohibit third parties from developing other types of 3D puzzles with a rotating capability. This suggests that technical function arguments are unlikely to succeed in invalidating a registration unless the technical function itself is apparent from the representation of the trade mark.

PIPCU’s Operation Ashiko takes down over 2,000 sites selling counterfeit goods

The UK Police Intellectual Property Crime Unit (PIPCU) is starting to settle into its role having gone from suspending approximately 2,000 websites in its first 8 months of existence to shutting down a similar amount in the first six weeks of 2015 alone. Counterfeit goods available on these sites included brands such as Abercrombie & Fitch, Burberry and Tiffany.

Concerned brand owners can report a site selling counterfeit goods at the website

This article is part of BrandWrites by Bird & Bird - May 2015