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

If you missed out on The IPKat last week, then join this Kat for a catch up on the latest IP cases, news, and opportunities.

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Trade Marks

Jocelyn Bosse considered the Federal Court of Australia’s judgment in Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd, which assessed the consumer perception of a trade mark containing Italian language elements. The Court found that Australian consumers would not understand the term “mercato”, rendering it non-descriptive. In contrast, “centrale” was likely to be recognised by the English-speaking consumers, and thus, constituted a descriptive addition to the mark MERCATO CENTRALE, potentially suggesting it was a variant or sub-brand of MERCATO.

This Kat discussed the admissibility of belated evidence in invalidity proceedings based on absolute grounds for invalidity. In a recent decision (T-799/21), the EU General Court held that submitting evidence for the first time at the appeal stage before the Board of Appeal, does not necessarily render it inadmissible, given the objective of enabling the EUIPO to review the validity of a trade mark, as intended by Article 59(1)(a) of the EU Trade Mark Regulation.

Former GuestKat Jan Jacobi (BarentsKrans) commented on a recent trade mark decision by the Benelux IP Office, involving an AI-generated defence in opposition proceedings. The Office noted that, while the defence addressed some relevant aspects, it failed to consider the similarity of the goods in question. After examining the signs, the Office found an “undeniable” conceptual similarity, a strong degree of aural similarity, and an average degree of visual similarity between the two marks. Consequently, it upheld Penguin Books Limited’s opposition and rejected the registration of “ARTPENGUIN” for Class 16 goods.

Copyright

Eleonora Rosati evaluated the CJEU’s decision in Reprobel (C-230/23), which ruled that Articles 5(2)(a) and (b) of the InfoSoc Directive produce vertical direct effect. This means that these provisions impose unconditional and unequivocal obligations on the Member States, even while allowing some discretion in their national transposition. Consequently, the Court held that any national rule conflicting with these provisions needs to be disapplied. The decision is argued to have significant implications that extend beyond reprography and private copying.

Patents

KatFriend Ian Jones (GJE) analysed a recent Board of Appeal decision concerning the re-establishment of rights procedure (T-0178/23). The Board offered guidance by holding that the availability of this remedy depends on being “unable” to meet a deadline and emphasised the significance of fully substantiating requests for re-establishment of rights within the specified period.

Guest UPCKat John Snape (Carpmaels) summarised the UPC Court of Appeal’s opt-out decision in AIM v Supponor. The Court held that the initiation of national litigation before the transitional period did not preclude the withdrawal of an opt-out, overturning the first-instance ruling of the Helsinki Local Division. This implies an increase in the number of patents that could come under the UPC’s jurisdiction compared to what was initially anticipated from the first-instance ruling.

IP News, Events, and Opportunities

Anastasiia Kyrylenko notified The IPKat readers of several upcoming events, opportunities, and news. The events and opportunities are a lecture on trade secrets regimes to be held at the European University Institute on December 12, the 18th Annual International Intellectual Property Lecture by Robert P. Merges on March 18, 2025, the Spring Conference of the Chartered Institute of Trade Mark Attorneys, a call for papers by the International Society for the History and Theory of Intellectual Property, and a fellowship position at WIPO’s Development Agenda Project on Copyright and the Distribution of Content in the Digital Environment. The notable IP news of the week was the publication of the European Copyright Society’s opinion, offering responses to Mio and Konektra (C-580/23 and C-795/23, respectively), which are currently pending before the CJEU. For more details, do not forget to have a look at our latest Sunday Surprises post here.