Never Too Late: If you missed the IPKat last week!

If you're still recovering from a big week and haven't had the energy to catch up on the IP news, here's the summary of everything you missed:

Patents

This Kat is still recovering too. Image from Pixabay.

Rose Hughes discussed the EPO Board of Appeal decision T 0438/22 on the legality of the requirement for the description of a patent to be amended in line with the allowed claims, especially the deletion of "claim-like clauses". The BoA concluded that legal basis for this requirement might "be derived from the EPC as a whole", but accepted that it is not necessary to amend the description every time the claims are amended during prosecution.

Trade Marks

Katfriend Victoria Thüsing (Stockholm University) informed readers about the recent EUIPO Fifth Board of Appeal decision about a 3D trade mark application for a car roof tent. The BoA confirmed that the shape lacked inherent distinctiveness, as it did not deviate significantly from what is customary in the tent sector.

Anna Maria Stein updated readers about Italy's implementation of the new EU Regulation on the GI protection for craft and industrial products. A new law entered into force on 11 January 2024 that aligns the protection of Italian artisanal and industrial products with the EU Regulation.

Marcel Pemsel outlined a recent decision on the independent distinctive role of an element of a complex trade mark. Chanel unsuccessfully opposed the registration of the word mark ‘HiCoco’ in Germany on the basis of its trade mark for ‘COCO’. The German Patent Court found that 'COCO' had a low degree of distinctiveness and therefore there was no likelihood of confusion.

Geographical Indications

Anastasiia Kyrylenko gave readers a taste of her research on the effect of war on the protection of GIs in France. For example, she showed how the demographic losses in both WWI and WWII meant that the beekeeping traditions associated with the French honey ‘Miel de Corse’ were almost lost, whilst import restrictions boosted the consumption of other products, such as the oil from 'Olive de Nîmes'. You can read her full article in GRUR International here.

Anna Maria Stein discussed the unsuccessful opposition to the application for a figurative trade mark depicting a butterfly on a ring, on the basis of an existing trade mark depicting two birds on a ring. The EUIPO’s Opposition Division found that the mere association with an animal species was not sufficient to evoke conceptual similarity.

Copyright

Eleonora Rosati alerted readers to the latest referral on the meaning of originality in EU copyright law - this time, a referral from Romania regarding the protectability of a critical edition of a work (a type of derivative work). Importantly, this is the first time the CJEU will consider this issue from the perspective of copyright subsistence, not infringement.

Intellectual Property Generally

Annsley Merelle Ward shared the news that Tom Mitcheson KC (Three New Square) was appointed Deputy High Court Judge. Before the appointment to the High Court of England & Wales, Tom was a member of the ChIPs Network group that worked to secure the changes to the Patents Court Guide to encourage the use of junior advocates.