Law firm for IP strategy

Brands are valuable assets that need to be maintained and modernized over time in order to remain relevant. However, modernizing a brand is a balancing act. On the one hand, the brand needs to be updated to reflect changing consumer preferences and market trends. On the other hand, it is important to maintain brand identity and recognition. Our blog post sheds light on the legal framework conditions based on European trademark law and analyses what options trademark owners have to adapt and further develop their trademarks without jeopardizing their property rights. We point out the pitfalls to watch out for when modernizing a brand and provide practical tips for successful brand maintenance.

Not only words, figurative elements and their combinations constitute signs that can potentially be registered as trademarks. Section 3 (1) of the German Trademark Act (MarkenG) also refers to a variety of other signs that can potentially serve as an indication of origin and for which registration as a trademark is possible, such as sounds, three-dimensional designs and colours. The following article is dedicated to the latter.

So-called repeat filings, often intended to circumvent the obligation to put the trademark to genuine use and thus taking advantage of further grace periods for the refiled trademarks, might seem attractive in particular to reduce costs. However, they also involve the risk of finding bad faith at least under EU law. The concept of bad faith is not legally defined but is shaped by the respective case-law. In this respect, the “Monopoly” Judgment of the General Court sets forth relevant principles and provides important strategic guidelines. Furthermore, the recent decisions of the Cancellation Division of the EUIPO regarding the trademarks of the famous artist Banksy representing one of his best known artworks, the Flower Thrower, demonstrate the importance of having a sound strategy behind any trademark filing. In the following, we will have a closer look at these cases to illustrate the possible risks of repeat filings and to provide some advice on risk-minimizing trademark filing strategies.

If a business is held liable by another for an (alleged) infringement of their business identifier, the question always arises as to whether and how one can defend oneself against such claims. In most cases, consideration is then given to whether the business identifier lacks the distinctive character required for its protection. Or the question is raised as to whether the business identifier is used in the course of trade for a specific business operation close enough to the other party’s business. Or the questions of priority or similarity of signs and much more is dealt with. It is relatively seldom considered whether the business identifier may not enjoy protection at all because it is misleading and how this can be most effectively asserted in court. This article sheds a little light on this topic.