ArlatiGhislandi’s Post

📣For the first time ever, the Executive Director of EUIPO has referred abstract legal questions to the Grand Board of Appeal under Article 157(4)(l) EUTMR. 💡Contribute to history by submitting observations if you can show an interest and fall under the definition of Article 37(6) EUTMDR (e.g. user groups). 📌Deadline: 2 months after publication of the referral in the Official Journal of the Office. Watch out for the April edition! The questions concern the conditions of the conversion of an EUTM application into national TM applications. https://lnkd.in/d8dFiQ6B

To complete our series of pieces highlighting recent Legal Updates that you may have missed, we consider cases where the EU General Court disagreed with the findings of the EUIPO. https://lnkd.in/eKsfKaVR

The General Court's jurisdiction over EUIPO decisions debated by AG Pikamäe. Should Art. 7(1)(a) be examined before Art. 7(1)(b)? Stay tuned for the CJEU's decision. #GeneralCourt #EUIPO #CJEU #TrademarkJurisdiction

BASMATI ruling of the CJEU. Good for legal certainty- the relevant point in time for EUIPO oppositions and cancellation actions clarified. I would have liked to see EUIPO prevail and find the position somewhat formalistic, but certainly (much) better than that of the GC in Nowhere (Ape Tees). The outcome of the appeals in Ape Tees and Shoppi should now be clear.

In two recent decisions, both the Third Chamber of the General Court and the Second Board of Appeals of the European Union Intellectual Property Office (EUIPO) ruled that, in the field of trade marks, the inversion of words in the name, i.e. when one mark consists of two words and another mark consists of the same two words, in inverted order, does not lead to a likelihood of confusion when both words have a low degree of distinctiveness. Interested? Read more about the discussion on the IDS website by clicking on the link: https://lnkd.in/dUGnzW4v

Great resource for our IP lawyers - check this out 👇 #euipo #eurojuris #iplaw #intellectualproperty #trademarks Eurojuris IP/IT Practice Group

We are thrilled to announce that Stephany Torres and Michael-James Currie from Primerio will be actively participating in a captivating roundtable discussion at the LESI 24 Annual Conference in Madrid, Spain on Tuesday, April 30th, 2024, when they will delve into the interplay between Antitrust Law and Intellectual Property Law. This discussion promises to be enlightening, exploring the nuances of these legal realms with specific reference to the OECD's groundbreaking Recommendation on Intellectual Property Rights and Competition, adopted on June 8, 2023. Recognizing the profound relationship between intellectual property rights and competition, Stephany and Josh will navigate how these domains actually complement each other in achieving a common goal. Keep an eye out for further updates, insights, and highlights from this enriching session! #Primerio #LESI24 #Antitrust #IntellectualProperty #LegalInsights #LESIConference #Madrid2024

The latest in IP news 📢 First referral of questions by the Executive Director to the ‘Grand Board’ of Appeal. The Executive Director of the EUIPO - European Union Intellectual Property Office has sought clarification from the enlarged Board of Appeal on legal interpretations of the EU Trade Mark Regulation (EUTMR). This is the first time Article 157(4)(l) of the EUTMR, which states that the Executive Director may refer questions on a point of law to the Grand Board and designed to ensure uniform application of the EUTMR, has been used. Read the full news article here 👉 https://lnkd.in/gFrBBBMA Subscribe to our newsletter to stay up-to-date with all the most pertinent trademark stories and news here https://lnkd.in/d6ZGz7m Want to write for The Trademark Lawyer newsletter? Email ellen@ctclegalmedia.com #trademark #lawyer #news #EUIPO #executivedirector #grandboardofappeal #EUTMR #IPlaw

The Grand Board of Appeal has issued its opinion on the first ever request of the Executive Director of the EUIPO pursuant to Article 157(4)(l) EUTMR. Questions were put forward by the Executive Director on a point of law regarding the possibility of conversion despite a not-yet-final decision refusing the mark. In responding, the Grand Board considered, in particular, that Article 66(1), Article 71(3) and Article 139(2)(b) EUTMR must be interpreted to mean that conversion cannot be excluded on the basis of a decision refusing the EUTM application in ex parte or inter partes proceedings where the application is subsequently withdrawn before the refusal could take effect (i.e. during the appeal period), even if no appeal is actually filed against that refusal. Where conversion is requested subsequent to a withdrawal of the EUTM application (Article 139(5) EUTMR), Article 139(2)(b) EUTMR does not apply. Thus, EU-27 conversion would remain possible in such circumstances, even though the EUIPO had previously determined in a decision that had not yet become final, that an obstacle existed in all or part of the EU.   The full text of the opinion can be consulted by clicking here:https://lnkd.in/eC6CdVPJ

#euipo #trademarks #europeanunion First referral of questions by the Executive Director to the "Grand Board" of Appeal. The Executive Director of the EUIPO has sought clarification from the enlarged Board of Appeal on legal interpretations of the EU Trade Mark Regulation (EUTMR). This is the #firsttime Article 157(4)(l) of the EUTMR, which states that the Executive Director may refer questions on a point of law to the Grand Board and designed to ensure uniform application of the EUTMR, has been used. The questions relate to ‘conversion’, a process allowing for an EUTM application or registration to be converted into one or more EU national applications, should issues of registrability arise in specific Member States. This process, intended to overcome the downsides of the EUTM’s unitary character, preserves priority dates from the initial EUTM application. The questions referred to the Grand Board specifically address the conditions under which conversion is admissible, particularly the interpretation of Article 139(2)(b) of the EUTMR. This clause bars conversion in those states where a decision of the Office identifies grounds of refusal. However, this raises questions about whether the decision must have become final in order to prevent conversion. This is relevant when the Office refuses an EUTM application, but the application is withdrawn during the appeal process. The practice of the Office since 2006 is that the decision of the EUIPO is sufficient to exclude conversion even when it did not become ‘final’ due to the withdrawal of the application. https://lnkd.in/enrWmma7