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

If you missed out on The IPKat last week and want to catch up, then join this Kat for a summary of what you missed.

Trade Marks and Geographical Indications

Katfriend Timothée Charmeil (Elvinger) discussed a recent decision by the EUIPO’s Cancellation Division, which was tasked with deciding whether wine and gin could be considered similar. The applicant argued that according to the “Similarity Tool”, they were indeed similar. Although the Cancellation Division accepted the applicant’s reliance on the Similarity Tool, it emphasised that, as of the date of the decision, the Tool no longer considers wine and gin similar. Consequently, the Division rejected the applicant’s request to invalidate the defendant’s trade mark due to lack of likelihood of confusion.

Image by Riana Harvey

Marcel Pemsel celebrated Halloween with a decision of the Higher Regional Court of Hamburg concerning the trade mark battle between Globefill and Kefla over similar skull-shaped bottles. The Court held that Kefla’s bottles infringed Globefill’s trade mark, as they posed a risk of trade mark infringement under Art. 130 EUTMR. Moreover, the Court rejected Kefla’s claims that (i) Globefill’s skull-shape lacked distinctiveness, noting that it significantly differed from other bottle shapes on the market, and (ii) the shape added substantial value to its trade mark, reasoning that the mere fact of a design adding some value to the goods is insufficient grounds for refusal.

Anastasiia Kyrylenko reported on a recent decision by the Regional Court of Munich, which, arguably for the first time, applied the newly adopted EU Regulation on geographical indications for wine, spirit drinks and agricultural products. The Court held that the shape of “Nürnberger Rostbratwürste” (a protected geographical indication) was neither expressly mentioned in the protected name nor described in the product specification. Furthermore, the assessment of various sausages on the market revealed that the shape and size of Nürnberger Rostbratwürste’s sausages are generic. Therefore, “Mini Rostbratwürstchen” did not infringe Nürnberger Rostbratwürste’s rights to its geographical indication by producing mini sausages.

Kevin Bercimuelle-Chamot analysed the EUIPO Cancellation Division’s recent decision concerning the revocation of Baccarat’s trade marks on footwear and textiles. The Cancellation Division was asked to determine whether Baccarat had genuinely used its contested trade mark for a continuous five-year period (i.e., from 14 August 2018 to 13 August 2023). After evaluating the evidence of the contested trade mark’s use in terms of place, time, extent, and nature, as submitted by Baccarat, the Cancellation Division found it insufficient to demonstrate genuine use within the meaning of Art. 58(1)(a) of the EUTMR, and accordingly, revoked Baccarat’s trade mark for scarves and footwear.

Copyright

Eleonora Rosati shared the key findings of her new article, “Infringing AI: Liability for AI-Generated Outputs under International, EU, and UK Copyright Law” which has been published in the European Journal of Risk Regulation. In the article she addresses three key questions: (i) under what circumstances an AI-generated output may reproduce the work it was trained on, thereby causing copyright infringement, (ii) if an AI-generated output is found to be infringing, who would bear liability for that infringement, and (iii) whether any copyright exceptions may apply, and if so, who could benefit from them. The complete article can be found here.

Katfriends Jean-Sébastien Mariez and Laura Godfrin (both Momentum Avocats) discussed a recent French Cour de Cassation decision, which ruled that Steam subscribers could be legally prohibited from distributing the video games they purchase to third parties. With this ruling, the Court rejected the applicability of the principle of exhaustion to digital copies of copyrighted works.

Patents

Rose Hughes highlighted the priorities that drug companies need to balance when setting their IP strategies for AI-assisted drug discoveries. Drug companies must consider several key factors, including ensuring strong IP protection for the clinical drug candidates, deciding whether to protect AI drug discovery platforms with IP or keep them as trade secrets, and having access to high quality data to develop machine learning models capable of accurately predicting a drug’s clinical efficacy, toxicity, and manufacturability.

Rose Hughes also examined case T 2510/18, in which the morality of an invention deriving from dishonest practices was considered. The invention, intended for treating malaria, was argued to have resulted from an immoral research process, involving infringement of the IP rights of indigenous communities over their traditional knowledge. However, the EPO Boards of Appeal concluded that the behaviour of the patentee did not exclude the invention from patentability under Art. 53(a) of the European Patent Convention.

Image Rights

Eleonora Rosati commented on a decision by the Bologna Court of Appeal regarding the unauthorised use of the image of Duca d’Este on Aceto Balsamico di Modena products. The Court effectively confirmed that cultural heritage assets enjoy a form of perpetual image rights, making it impermissible to use them for commercial purposes without prior authorisation from the competent authority.

Book Review

Alessandro Cerri reviewed “Designs Law and Practice (3rd Edition)” by RPC. The book demonstrates how designs can be protected via various IP rights. While the book’s primary focus is on the UK, some chapters also touch upon the legal frameworks in the US and the EU, providing a comprehensive practical guidance.

Events, News, and Opportunities 

Rose Hughes and Verónica Rodríguez Arguijo notified The IPKat readers about a variety of events, news, and opportunities. 

Upcoming events include some courses and seminars offered by the University College London, the 10th session of the WIPO Conversation on “Generative AI-IP and Outputs” to be held on 5-6 November, the 34th International Publishers Association Congress between 3 and 6 December in Mexico, and the Geographical Indications Conference 2025. 

Some opportunities of the week are senior research fellow/postdoctoral researcher positions in Economics/Management of Innovation at the Max Plank Institute, a postdoctoral researcher position in Information Law at AI, Media and Democracy Lab of the University of Amsterdam, a legal officer in WIPO’s Traditional Knowledge Division, and essay competitions of The SCL AI Group and The International Association for the Advancement of Teaching and Research in Intellectual Property (ATRIP). 

Finally, this week’s IP news include several key updates: the EPO published a report on patent applications originating from universities, WIPO announced that the twelfth edition of the Nice Classification will enter into force on 1 January 2025, the EUIPO and the European Union Agency for Law Enforcement Cooperation released the report, “Uncovering the Ecosystem of Intellectual Property Crime: A Focus on Enablers”, and the Intellectual Property Office of the UK launched the “Fake Always Breaks” campaign. 

For details and further news, do not forget to have a look at our PatKat’s Monday Miscellany post here, and our TechieKat’s latest post here.