International Reports - More Updates


18 Apr 2018
EPO opposition: corporate in-house IP departments' engagement

European Patent Office opposition data reveals that companies are more likely to outsource opposition work to private firms than to represent themselves. Companies' in-house patent attorneys tend to act as patentees more often than as opponents. Full text

11 Apr 2018
EPO opposition: private practice patent firm’s core technologies

In 2016 UK firms tended to represent patentees and German firms tended to represent opponents in European Patent Office (EPO) oppositions. While most patents subject to EPO oppositions belonged to International Patent Classification (IPC) Class A, most of the specialised firms for oppositions in technologies of IPC Classes B to H were from either the United Kingdom or Germany. Full text

04 Apr 2018
EPO opposition: private practice patent firm's engagement

As defending and opposing patents before the European Patent Office require different skills, a firm's experience in these two roles may be a factor when choosing a representative. Recent data suggests that private firms in Germany and the United Kingdom continue to dominate the oppositions arena. Full text

28 Mar 2018
EPO opposition: choice of representative by nationality

Most European Patent Office oppositions involving non-European Patent Convention parties remain divided between German and UK representatives. However, in countries traditionally tied to the United Kingdom, there is a shift towards choosing German over UK representation. Full text

14 Mar 2018
EPO opposition: popular technologies and opposition behaviour of parties by nationality

While the absolute number of European Patent Office oppositions continues to grow, opposition appears to be used by the same types of party, at least in terms of nationality. Full text

08 Nov 2017
No likelihood of confusion between SINA rice and SITA rice

The District Court of The Hague recently held that there was no likelihood of confusion between SINA rice and SITA rice. This decision was somewhat remarkable considering earlier decisions on similar comparisons between four-letter signs relating to foodstuffs. Full text

12 Jul 2017
Can a plant rule supplant a plant decision?

The Administrative Council of the European Patent Office recently amended the regulations pertaining to the patentability of plants. In the new rules, plants and animals exclusively obtained by an essentially biological breeding process are excluded from patentability. Full text

28 Jun 2017
Soya milk and peanut butter: what names can and cannot be used?

Like vegetarian meat substitutes, dairy substitutes are also often named after the product they are replacing. A conflict about this practice has led to a ruling by the European Court of Justice. Full text

05 Apr 2017
Bull fight finally yields a victor

After 14 years, the protracted legal fight between coffee shop The Bulldog and energy drink brand Red Bull is over, with The Bulldog coming out on top. But what can be learned from this case? Full text

29 Mar 2017
Naturalis must halt refurbishment on grounds of architect’s copyright

In recent interlocutory proceedings a judge ordered Naturalis, a museum in Leiden, to stop the refurbishment of its building. The building's architect had opposed the refurbishment on the grounds of his copyright in the original design. Full text

01 Feb 2017
Can a vegan schnitzel be called a schnitzel?

Vegetarian meat substitutes often bear the name of the meat product that they are replacing – for example, schnitzel, sausage roll or chicken kebab. In the Netherlands, politicians are debating these practices and considering how to stop this misleading use of meat names. Full text

07 Dec 2016
Iceland versus ICELAND: why a country’s name can also be a trademark

British supermarket Iceland Foods is at loggerheads with Iceland the country over the European trademark registration for ICELAND. The question to be decided is whether a company can claim the name of a country. Full text

23 Nov 2016
European Commission notice against patentability of plants does not affect European plant patents

The European Commission recently issued a notice regarding the patentability of plants and animals obtained by means of essentially biological processes. However, the commission’s notice is not legally binding; it is up to the courts and boards – not the commission – to interpret the law. Full text

19 Oct 2016
Illegal hyperlinks: the final decision

Is posting a hyperlink to a work which is protected by copyright allowed? Ruling in the long-running Sanoma case, the European Court of Justice has now said yes – and no. Full text

29 Jun 2016
Fate of Unified Patent Court after UK referendum

Now that the votes have been counted, it is clear that the UK electorate has voted to leave the European Union. No matter how the exit procedure goes, the situation will have a major negative impact on the realisation of the European patent package. Full text

22 Jun 2016
Starting patent rights enforcement in Europe through a single action

As the Netherlands is an important gateway for products into Europe, obtaining patent protection in the Netherlands may offer a company a way to prevent infringing products entering the European market. In addition, trademark protection in the Netherlands can be equally important. Full text

20 Apr 2016
Food for thought: protection and design of foodstuffs and packaging

Consumers come across food and drink products every day, and several times a day they must choose between the products of various suppliers. The distinguishing power and brand experience of these products and their packaging play a big role in these choices. Full text

06 Apr 2016
"Zo. nu eerst": Yourhosting versus Bavaria

A court in The Hague has issued its judgment in a case launched by beer brewer Bavaria against Yourhosting. The court held that Bavaria’s slogan was protected by copyright. The fact that the slogan was “catchy” with a certain comic factor showed that the brewer had made its own creative choices. Full text

10 Feb 2016
Registering an acronym as a trademark

Most trademarks consist of a word or a logo, but acronyms are also popular as trademarks. Before determining whether an acronym is suitable as a trademark, it is important to know what the acronym stands for, and particularly whether this is its usual meaning in the relevant sector. Full text

03 Feb 2016
Is MEMORY a trademark for games?

In a recent decision the Court of Amsterdam held that word combinations used by online games provider Jaludo did not infringe Ravensburger’s MEMORY trademark, which has been used for a memory game since 1961. The court rejected Ravensburger’s case because Jaludo used the word 'memory' as a description of its games. Full text

27 Jan 2016
GOUDKUIPJE versus GOEDCUPJE: comparing coffee to cheese

In recent proceedings Koninklijke Eru Kaasfabriek lost an opposition which it had filed against Goedcupje BV's application to register a trademark for the logo GOEDCUPJE. The Benelux Office for Intellectual Property held that the fact that both trademarks related to food was not enough because the foods in question were very different. Full text

14 Oct 2015
Nested claims before the EPO: pragmatic cosmetics or clarity-obstructing nuisance?

It has been said that the logo of the European Patent Office resembles the ideal method for drafting a set of patent claims: the broadest, most well-rounded claim should be in the centre, surrounded by additional layers of protection in the form of dependent claims. This can result in nested subject matter within the scope of the broadest claim. The result could be a set of nested claims – or could it? Full text

02 Sep 2015
Impartial to partial priorities: questions referred to EPO Enlarged Board of Appeal

The European Patent Convention hides a notorious concept known as ‘the inescapable trap’: if a granted claim involves added matter, there is no way to restore it except by shifting the scope of the patent – which in turn invalidates the patent. Recent European Patent Office practice suggests that there might be another way for patentees to shoot themselves in the foot: through ‘poisonous priority’. Full text

17 Jun 2015
SKY trumps SKYPE – but not out of the blue

The General Court of the European Union recently confirmed that the trademarks SKY and SKYPE were confusingly similar. The decision is a setback for the popular Skype service, which allows users to call and chat over the Internet for free. Full text

08 Apr 2015
Claims on plants obtained by essentially biological processes not excluded from patentability

Good news for the plant biotech industry: the Enlarged Board of Appeal has issued its ruling in the consolidated Broccoli and Tomato cases in favour of the patentability of claims on a novel plant product generated by an essentially biological process or a product-by-process claim defined in the terms of such a process. Full text

28 Jan 2015
Managing directors, beware personal liability for IP rights infringement

If a managing director is found liable for damage, the compensation that he or she is required to pay from private funds can mount up. However, under Dutch law it is rare for a managing director to be held personally responsible for an IP rights infringement. For this to happen, a case of personal liability must be made against him or her. Full text

21 Jan 2015
Defending your stripes

Benelux companies using stripes on their vehicles must consider the right of the Netherlands, which safeguards its copyright and trademark rights in its territory in the stripes used on government vehicles. However, the state has not always succeeded in defending its stripes, as demonstrated by its case against Darkness Reigns Holding. Full text

29 Oct 2014
The value of a sound trademark

The world’s most valuable trademarks are APPLE ($98 billion), GOOGLE ($93 billion) and COCA-COLA ($79 billion). Not only does the standard word mark or logo of these brands represent great value to the balance sheet of the business, but certain sound trademarks may achieve even greater recognition and represent even greater value than the associated word mark or logo. Full text

22 Oct 2014
Retro: registering 'lost' brands

Retro has made a comeback in recent years. Brands which used to be all the rage but then disappeared from the market are now getting a new lease of life. Reintroducing such names and benefiting from the goodwill often still associated with the brand is an attractive proposition for companies. But is it allowed? Full text

15 Oct 2014
Hollandaisas slips up on flip-flops

In a case brought by flip-flop manufacturer Havaianas, the Central Netherlands District Court held that the trademarks HOLLANDAISAS and HAVAIANAS were not similar enough to create confusion. However, the judge held that the Hollandaisas flip-flops were in breach of the Havaianas design. Full text

06 Aug 2014
Some trade names are best at sufficient distance

The Van der Valk hospitality chain, which owns hotels, motels and restaurants, is well known in the Netherlands. The place name, which forms part of the name of each of its hotels, distinguishes them in terms of location, but can sometimes result in conflict. Recently, the Oost-Brabant Court considered whether a new Van der Valk hotel could open with a similar name to another hotel just 15 kilometres away. Full text

30 Jul 2014
Battle of the stars

In a recent decision, the Benelux Office for Intellectual Property (BOIP) considered whether two logos, one owned by EFE SA and the other by the European Commission, were similar. In order to do so, BOIP considered the logos' visual, aural and conceptual similarities Full text

23 Jul 2014
Protecting the valuable Dutch dance music industry

The Dutch dance music industry is worth more than €500 million a year and has become an important export product. However, in order to continue being successful and to protect innovations against infringement by third parties wishing to piggyback on that success, DJs and festival and event organisers need to have registered, legally strong trademarks. Full text

16 Jul 2014
Degeneration into a generic name: companies are victims of their own success

The aim of every trademark owner is for its trademark to become well known on the market. However, this success can backfire when a trademark becomes so well known that consumers start to think that it is a generic name for the underlying products or services. Although this might appear to be the ultimate compliment, such development may lead to the downfall of a trademark. Full text

09 Jul 2014
Court grants MSD injuction for infringement by Mylan

Merck Sharp & Dohme Corp (MSD) owns a patent protecting the application of the drug finasteride for the treatment of androgenic alopecia. MSD initiated infringement proceedings in 2012 against Mylan, which was marketing a generic finasteride product. The District Court of The Hague recently ruled on this dispute. Full text

23 Apr 2014
Court rules on (fashion) design law

The District Court of The Hague recently issued a judgment in a case involving well-known clothing brand O’Neill and Scandinavian clothing manufacturer L-Fashion. The subject: the design of a ski jacket. The decision demonstrates the importance of protecting and monitoring IP rights. Full text

16 Apr 2014
Illegal downloads arrive in the Netherlands

Until April 10 2014, illegal downloads did not exist in the Netherlands. Anyone could legally download music, films and books without incurring a penalty. However, on that date the European Court of Justice ruled that the download ban would take effect in the Netherlands immediately. Full text

09 Apr 2014
De Smaak Van: protecting trade names and domain names

A preliminary relief judge recently accepted De Smaak Van's request that use of the trade name De smaak van Twente for culinary activities be stopped. As both companies are engaged in the organisation of culinary events and the provision of business gifts and Christmas hampers, and their activities all take place in the region of Twente, the judge felt that there was a risk of confusion. Full text

29 Jan 2014
Protecting The Diary of Anne Frank

The Diary of Anne Frank is well known. Frank's death in 1945 meant that copyright in the diary will expire in 2016, and thus the Anne Frank Trust applied for additional protection under trademark law. However, both the Benelux Office for Intellectual Property and the Court of Appeal rejected the application. Full text

09 Oct 2013
Calling a halt to trademark infringement in social media

Trademark use, and thus trademark infringement, have increasingly shifted from the offline to the online world. How should you deal with trademark infringement on the Internet and, more specifically, how can you guard against trademark infringement in social media? Full text

26 Jun 2013
District Court of The Hague confirms patentability of plants obtained by classical breeding

The District Court of The Hague has passed judgment in Cresco v Taste of Nature, ruling that as long as a plant meets the criteria for patentability of "novelty, inventiveness and industrial applicability" and is not a plant variety, that plant is patentable. The Enlarged Board of Appeal of the European Patent Office must now deal with exactly the same questions in cases involving tomatoes and broccoli. Full text

15 May 2013
Advocate general confirms Dutch Court of Appeal's Cipralex decision

The validity of Lundbeck's European patent and supplementary protection certificate protecting its blockbuster drug Cipralex® has been litigated in the Netherlands since 2008. The advocate general recently issued his opinion on the issue, but the Supreme Court's final decision is still awaited. Full text

01 May 2013
By royal appointment: IP rights implications of the coronation

As well as being an occasion of national celebration, the coronation of Prince Willem Alexander is of particular interest as the royal House of Orange and IP rights are closely entwined. Advertising agencies, companies and trademark holders that turn the coronation to their advantage can seriously benefit from the festivities – even more so if they manage to protect their creative efforts properly through IP rights. Full text

20 Mar 2013
Appeal court grants injunction against infringement

In a technically complex case, the Court of Appeal has granted Agfa Graphics NV an injunction after finding that products offered and sold on the Dutch market by Chinese company Chendu Xingraphics Co Ltd NV infringed Agfa’s European patent specification. Full text

20 Feb 2013
Pure 3D trademarks: a unique occurrence

According to European legislation, three-dimensional (3D) trademarks can be registered. However, day-to-day practice can be surprising. Once a 3D trademark passes the distinctiveness text, the exceptions laid down in the law will be lurking - for instance, is the shape determined by the nature of the product, or does shape give products substantial value? Therefore, registering a pure-form trademark in Europe is rare. Full text


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Issue 90