NEWSLETTER FEBRUARY 2023

Trademark LAW

  • Preliminary injunction against the use of “EtOH” for alcoholic beverages denied due to lack of distinctiveness

On 9 February 2023, the Danish Maritime and Commercial High Court denied an application for a preliminary injunction against the use of “EtOH” – the chemical abbreviation for ethanol, i.e. alcohol – and “Nordic EtOH” for alcoholic beverages. The plaintiff, EtOH Spirits ApS, claimed that the use by Nordic Ethanol ApS infringed their trademarks rights, as well as constituted a breach of the Danish Marketing Practices Act and the Danish Companies Act.

The Court found that the word element “EtOH” in the plaintiff’s figurative EU trademark registered for “whisky” was descriptive for the goods and thus not protected against the defendant’s similar use. Moreover, the Court stated that the figurative appearance of the mark itself only enjoyed a narrow protection. Due to the differences in label design, type of alcoholic beverages, marketing material, fonts, and other elements of the marks, the Court ruled that there was no risk of confusion. Hence, the conditions for granting a preliminary injunction were not met.

In the same vein, the Court found that the highly descriptive character of the word element “EtOH” in regard to alcoholic beverages required an intense establishment in the market, in order for it to hold sufficient distinctiveness. As this had not been proven, the sign was not protected as a well-established (unregistered) trademark under the Danish Trademark Act.

Furthermore, having regard to the descriptiveness of “EtOH” and the considerable differences between the products and company names, there was no risk of confusion and, thus, no breach of neither the Danish Marketing Practices Act nor the Danish Companies Act.

The decision can be read in Danish here.

  • The figurative EU trademark “3” did not preclude the registration of the figurative trademark “3 MAX” for the same goods

On 14 February 2023, the Danish Maritime and Commercial High Court ruled that the figurative EU trademark “3”, registered for telecommunications, did not preclude the registration of “3 MAX” for the same goods.

Although it was agreed between the parties that the trademark “3” had a reputation within the European Union, the Court pointed out that it dominantly consisted of a cardinal number. Consequently, the trademark only enjoyed a narrow protection that did not prevent the registration of the figurative trademark “3 MAX”.

The case demonstrates the fundamental principle in trademark law of the need to leave basic signs and indications, e.g., letters, numbers, and primary geometric forms, free. Accordingly, if registered, such trademarks are only narrowly protected.

The decision can be read in Danish here.

  • Hermés v. Rothschield – First NFT trademark case decided in the United States

On 8 February 2023, a verdict in the highly covered lawsuit concerning the application of (American) trademark law to non-fungible tokens (“NFT’s”) was returned. The luxury brand Hérmes International SA claimed that Mason Rothschild’s creation of 100 so-called “MetaBirkins”, i.e., NFT’s depicting non-existing Birkin-bags, infringed their rights to the “Birkin” trademark registered for physical goods.

The defense argued that the NFT’s constituted an artistic commentary and were, thus, covered by the right to free speech. Notwithstanding this, the jury found that the use of Hermés’ trademark for digital tokens posed a risk of confusion and trademark dilution. Consequently, the jury ruled in favor of Hermés.

The emergence of the metaverse in the legal field is also apparent on a European level. In 2022, the European Union Intellectual Property Office (EUIPO) received 1599 trademark application concerning the metaverse as compared with 237 applications in 2021.

The rapid advancement of the digital world addresses new legal questions to traditional intellectual property. In this respect, this verdict is considered a landmark case. It remains to be seen, how European law will develop on the regulation of NFT’s and the metaverse.

PATENT LAW

  • The Sunrise period of the Unified Patent Court starts 1 March 2023

From 1 March 2023 it will be possible for applicants and proprietors of a European Patent to file an opt-out from the exclusive competence of the Unified Patent Court. This option is part of a transitional period, which is expected to run for a minimum of seven years.

In order to opt-out from the jurisdiction of the Unified Patent Court, the opt-out must apply to all states for which the European patent is registered and must be made before any action in respect of the patent has been brought before the Unified Patent Court.

Once a European patent is opted-out, this will be effective throughout the entire life of the patent concerned, unless the opt-out is withdrawn.

The Unified Patent Court and the Unitary Patent are set to come into effect 1 June 2023.

Rights administration

  • The European Union offers financial support to SMEs for the protection of their IP-rights

From 23 January to 8 December 2023, SME’s can apply a fund established by the European Union to be partially reimbursed for fees paid for trademark and design registrations. As the means of the SME Fund 2023 are limited, grants are distributed on a first come, first serve principle.

At the maximum, each SME can be granted 1350 EUR for IP scan related activities (in order to develop an IP strategy), and 1000 EUR for trademark and design registrations. In order to be eligible to a grant from the fund, the enterprise in question must satisfy the official EU definition of an SME. The application can, however, be prepared by an external representative.

Reimbursement is not granted retrospectively. Consequently, EUIPO must have granted a voucher, before an application for an IP right is submitted. Equally, fees paid for already registered trademarks or designs cannot be reimbursed.

Read more about the SME fund here.