0370 270 6000

already registered?

Please sign in with your existing account details.

need to register?

Register to access exclusive content, sign up to receive our updates and personalise your experience on brownejacobson.com.

Privacy statement - Terms and conditions

Advocate General highlights the importance of keeping up with national case law when dealing with EU trade mark proceedings

8 December 2016

Advocate General Kolkott’s opinion on 2 December 2016, EUIPO v Szajner - C-598/14 P, highlights the importance of keeping up with national case law when dealing with EU trade mark opposition or invalidity appeal proceedings. 

In her opinion where an earlier non-registered right protected by national law is relied upon to challenge an EU registered trade mark (or application), changes in the national court’s interpretation of the law protecting that earlier right which occur after a decision of the Board of Appeal, must be taken into account by the EU General Court on appeal. 

In the UK, passing off may protect unregistered signs. In other EU Member States unfair competition is often relied upon. 

In this case the challenge was based upon the protection given to business names by the French Intellectual Property code. The General Court ruled, in favour of the EU trade mark owner, that the business name had a narrower field of protection than the Board of Appeal had. This was due to an interpretation of the French rules by the Cour de Cassation delivered after the Board of Appeal’s decision. In the Advocate General’s opinion the General Court was justified in doing so.

related opinions

H&M - fighting the two tier retail market and daring to push for better clarity on turnover rents

H&M is the latest retailer to confront its landlords about this ‘two tier retail market’ in an attempt to explore and negotiate more favourable terms.

View blog

IR35 changes - six months and counting...

In his 2018 Autumn Budget, the then Chancellor, Phillip Hammond, announced a significant change to the way liability for IR35 breaches will be dealt with for private sector companies from April 2020.

View blog

Retail: a tale of two markets

Ann Summers is the latest retailer to have entered into new voluntary deals with the majority of their landlords, rather than using the CVA process.

View blog

Supreme Court backs employers seeking to enforce restrictive covenants: Tillman v Egon Zehnder Ltd

The Supreme Court in Tillman v Egon Zehnder Ltd has determined that where post-termination restrictive covenants (i.e. “non-compete” clauses) in employment contracts go further than reasonably necessary to protect an employer’s business interests, it can apply the ‘blue pencil test,’ severing the offending words and leaving the remaining enforceable clause in place.

View blog

mailing list sign up



Select which mailings you would like to receive from us.

Sign up