Ten years after the well-known decision in Cantarella Bros v Modena Trading, the Federal Court of Australia has engaged with another case about the consumer understanding of trade marks with Italian language elements. On Friday, the Full Court delivered its judgment in Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCAFC 156. In assessing the infringement claims and the cross-claims for invalidity, the Federal Court found that Australian consumers would not understand the word "mercato" (market or marketplace), but could probably recognise the meaning of "centrale" (central ..read more

IPKat-approved vertical direct effect As students of EU law know, a key principle – which the now Court of Justice of the European Union (CJEU) recognized for the first time in the landmark 1963 judgment in Van Gend en Loos – is that of direct effect of EU law. Insofar as EU directives are concerned, they do not produce any horizontal direct effect. This means that they cannot be relied upon in private-party proceedings and do not impose obligations on individuals. Nevertheless, EU directives may produce – at certain conditions – a vertical direct effect. In cases in which EU l ..read more

Check our usual round-up for a weekly selection of opportunities, vacancies and events to attend! Conferences and calls for papers The role of universities in safeguarding academic freedom: the age of trade secrets (12 December 2024) On December 12, 2024, Jens Schovsbo will deliver a lecture at the European University Institute in Florence. The lecture, which may also be followed online, will discuss trade secrets regimes and their impact on the balance between academic openness and confidentiality in collaborative research. The 18th Annual International Intellectual Property Lecture (18 ..read more

On 27 November, the EU General Court rendered a decision (T-799/21) marking a significant milestone in the 13-year long trade mark battle between European Food SA (European Food) and Société des produits Nestlé SA (Nestlé). The General Court, in essence, found that submitting evidence for the first time at the stage of appeal to the Board of Appeal (BoA), where it could have been submitted at the first instance to the Cancellation Division, did not necessarily make the evidence inadmissible, especially in invalidity proceedings based on absolute grounds for invalidity.  A Kat trying ..read more

Uh oh... With the chill in the air, the AmeriKat thought it was a good time to refresh the other chilling sensation - re-establishing rights when you miss EPO procedural time limits.  At the helm to steer you through these icy waters is KatFriend, Ian Jones at GJE in London who explains how get to warm, dry land.   Over to Ian: "The European Patent Office’s (EPO) re-establishment of rights procedure offers a vital safety net for applicants and patentees who fail to meet procedural time limits. A recent Board of Appeal decision (T 0178/23) provides practical guid ..read more

Getting harder to turn your back on the UPC? The UPCKat is back with an analysis of last month's critical opt-out decision in AIM v Supponor.  With our guest UPCKat team in the form of guest UPCKat John Snape, and members from the team at Carpmaels, this post will examine the controversial decision.  Over to John:   "In joined orders ORD_598488/2023 and ORD_598489/2023, the UPC Court of Appeal (CoA) has held that national litigation commenced prior to the transitional period did not block withdrawal of an opt-out, overturning the first-instance ruling of the Hel ..read more

The IPKat has received and is pleased to host the following post by former GuestKat Jan Jacobi (BarentsKrans) concerning a recent trade mark decision of the Benelux IP Office in which the brief in support of an opposed trade mark application had been prepared by … ChatGPT. Here’s what happened: Benelux Office rules on opposition proceedings prepared by ChatGPT by Jan Jacobi Artificial intelligence (‘AI’) has surely been the hot topic of the last two years. In similar vein to a quote from a 1999 film, it seems that “AI is everywhere and all around us”. One of the more interesting aspects of ..read more

If you missed The IPKat last week, then join this Kat in keeping up with the latest IP news. Trade marks and GIs Alessandro Cerri reported on a recent decision of the Fifth Board of Appeal of the EU Intellectual Property Office concerning the likelihood of confusion between two pictures of elderly men's faces. The Board’s decision included the assessment of Article 8(1)(b) EUTMR and Article 8(5) EUTMR. The case highlighted the importance of the quality of the evidence. Former GuestKat Nedim Malovic (ASSA ABLOY) commented on a recent referral to the EUIPO Grand Board regarding the registrab ..read more

Slogans are a popular marketing tool. They transport messages clearly and succinctly and can be memorized easily. The same is true for political slogans. In a recent judgment, the General Court found that a political slogan closely related to the Russian invasion in Ukraine lacked distinctiveness. Background On 16 March 2022, the predecessor-in-title to the Administration of the State Border Guard Service of Ukraine applied for registration of the following figurative EU trade mark for goods and services in classes 9, 14, 16, 18, 25, 28 and 41: The phrase subject to the application was t ..read more

Taking note of the next events to attend Another week has come to an end and, as usual, it is time to catch up with the latest events in the IP world. As always, do not forget to check our Events page as well! Events Patent Law – Fit for an (Emotional) AI age?: CIIs, Training ANNs and Other Stories (4 December 2024) On 4 December 2024, the UCL Institute of Brand & Innovation Law Annual Innovation will host a panel discussion to evaluate the adequacies of patent law in the AI-age. To learn more about this hybrid event (London and online) and to register, click here. The role of ..read more