PGA Intellectual Property Newsletter – 06/07/2020

PGA Intellectual Property Newsletter – 06/07/2020

by PGA
The trademark “” cannot be considered generic

A trademark consisting of a generic term for the class of goods or services offered alongside the “.com” portion is not necessarily generic. On the contrary, if consumers do not perceive the mark as generic for the class of goods or services to which it refers, the mark can be considered distinctive and therefore registrable.
In this sense, the Supreme Court of the United States of America, in its ruling of 30 June 2020, ruled on the trademark “” in the United States Patent and Trademark Office v.

As is well known, a trademark can be generic, descriptive, suggestive, arbitrary or imaginative. Suggestive, arbitrary and imaginative trademarks are inherently distinctive. Descriptive trademarks can only be registered if they have “acquired distinctiveness” in the assessment of the consumer public. On the contrary, generic marks do not qualify for registration because any economic operator may use the generic term of the mark itself to refer to the designated good or service without being the exclusive owner of the generic distinctive sign.

On this basis, the US Supreme Court has specified that a term is defined as generic when, taken as a whole, it indicates to consumers the class of goods or services offered under the mark. Since consumers do not perceive “” as the class of online travel booking services, “” is normally not a generic mark. It is the consumer’s impression of the brand that determines whether the brand is generic or not. Consequently, the Court held that trademarks consisting of a generic term and “.com” are not necessarily generic.

The “Trentino apples” become PGIs

With the approval by the European Commission of the relevant implementing regulation, “Mele del Trentino” are officially recognised as a protected geographical indication.
In particular, with Regulation (EU) no. 2020/890 of 23 June 2020, published in the Official Journal of the European Union no. L 206 of 30 June 2020, the name “Mele del Trentino” was entered in the European Register of Protected Designations of Origin and Protected Geographical Indications, as a product in class 1.6. Fruit, vegetables and cereals, fresh or processed, listed in Annex XI to Commission Implementing Regulation (EU) No 668/2014.

Protection of the distinctive signs of political parties

Outside the business activity, the protection of the distinctive signs against the risk of confusion aims, not to guarantee economic interests, but to protect that set of values and aims pursued by the group through its participation in collective life. In relation to political parties, in particular, the protection of identity, summarized in the name and distinctive signs, finds its constitutional basis in Articles 2, 21 and 49 of the Constitution and expresses the need to avoid, precisely in relation to public debate, confusion, as regards the elements that characterize them as autonomous centers of expression of ideas and actions.

In this sense, the Italian Supreme Court ruled in its decision no. 11635, filed on 16 June 2020, by which the Court upheld the appeal brought by the Associazione Alleanza Nazionale and the Fondazione Alleanza Nazionale against the association Movimento Sociale Italiano – Destra Nazionale – Nuovo MSI.

Cyprus: new trademark law approved

On 05.06.2020 the Republic of Cyprus adopted the new Trademark Law, published on 17.06.2020. The European Intellectual Property Office (EUIPO), within the framework of the European Cooperation Programme (ECP2), has actively participated in the achievement of this goal, offering legal assistance throughout the process of drafting the new text.

Among the topics addressed in the new Cypriot Intellectual Property Act are included:
– the transposition of Directive (EU) No 2015/2436;
– the introduction of the multi-class system;
– the discontinuation of the need for the power of attorney document;
– new paper applications;
– fees.
Cyprus’ new Trademark Law has simplified the whole application and registration procedure. Deadlines have been introduced for the completion of opposition, cancellation and revocation procedures and putting an end to excessively lengthy processes.