COMING UP ON 1 MAY 2025: AMENDMENTS TO EU DESIGN LAW

We recently held a webinar on the upcoming amendments to EU design law. To learn more about the new amendments, listen to our webinar recording which will be uploaded soon on LexDellmeier’s YouTube Channel at www.youtube.com/@lexdellmeier-intellectualp8494. Most changes will be applicable as from 1 May 2025, others will have to wait until 1 July 2026 when secondary legislation comes into force. Here is some practical advice on the current changes.

1. Background

After more than 20 years of successful design protection in the European Union, EU design law has been updated to meet the new challenges of the digital age and to better protect the rights of design holders while ensuring effective competition in the interest of consumers.

2. Practical Advice

While most changes in the EU Design Regulation (EUDR) will generally be applicable as from 1 May 2025, some amendments need further clarification – in particular with regard to technical and other formal requirements which have not yet been defined. As one of the main aims of the new changes to EU design law is to further harmonize the design laws between the individual EU member states and the EUIPO, these technical and other formal requirements have to be discussed and agreed on between the national design offices of the EU member states and the EUIPO. While this process has already been started, it will still take some time until consent is reached. Until then, we will – unfortunately – have to rely on the old provisions. For instance, we will most likely not know until the middle of 2026 which (mostly technical) means of representation the EUIPO will allow for new forms of designs. Thus, design applications including movements, transitions or other forms of animation will have to wait until 1 July 2026 at the latest until they can be applied for. But there are some other important issues to be aware of and to take into account even before 1 May 2025.

• Renewal

Check if any of your designs will be due for renewal before 1 November 2025. If so, we strongly recommend to check if you can save money by renewing the design(s) by 30 April 2025 as the latest. On 1 May 2025, the renewal fees will increase significantly. For instance:

•  
  • For the first (1^st) renewal of one (1) design, you will have to pay EUR 90.00 until 30 April 2025 and EUR 150.00 as of 1 May 2025.
  • For the forth (4^th) renewal of one (1) design, you will have to pay EUR 180.00 until 30 April 2025 and EUR 700.00 as of 1 May 2025.

IMPORTANT:  As of 1 May 2025, the renewal fees will be due on the date of expiry of the registration instead of on the last day of the month on which protection ends. We recommend to adjust your docket accordingly.

• Deferment of Publication

The design registration fee that has to be paid at the time of filing your design application will cover the (old) application and publication fees.

IMPORTANT:  If you would like to defer publication of your design application filed as of 1 May 2025 (deferment is possible for up to 30 months), you have to pay the official deferment fee at the time of application. If you request deferment, but do not pay the deferment fee, the EUIPO will reject your whole design application, not just the request for deferment of publication.

IMPORTANT:  If you request deferment of publication, your design will be automatically published at the end of the 30-months deferment period. If you would like to prevent your design from being published, you have to actively withdraw the application until 3 months before the end of the deferment period.

• New Design Protection Symbol

Enhance visibility of your design rights by using the new design protection symbol consisting of a D in a circle - like the C for copyrights and the R for registered trademarks!

Again, to learn more about the new amendments to EU design law, listen to our webinar recording which will be uploaded soon on YouTube at www.youtube.com/@lexdellmeier-intellectualp8494. In addition, you are always welcome to contact us for further information on the new EU design law, either by phone at +49 89 55 879 870 or by email to info@lexdellmeier.com

Few are those nowadays who have not heard of the wonders of machine learning technologies. Names such as “ChatGPT”, “DeepSeek” or “Midjourney” have become known to virtually everybody and, for many, are now part of our everyday life. Writing a moving poem, drawing a realistic picture or composing a pretty melody has never been as easy as with the help of these new virtual assistants. As artificial intelligence (so-called “AI”) becomes increasingly involved in creative processes, the question of whether copyright protection may be granted to AI-generated content becomes more relevant by the day.

1. No specific public policy despite great economic significance

As of today, there is no national legislation addressing specifically the copyright protection of AI-generated content in the EU Member States. The EU “AI Act”, which entered into force on 1 August 2024, also remained silent on the question of copyrightability of AI-generated works. Case law on this particular issue is very scarce across Europe. Yet, the arrival of easily accessible, well-functioning AI-tools already has had a considerable impact on the creative industries and is expected to continue to have a transformative effect on the economic reality of artists. As an example, according to a joint study by GEMA and SACEM (Collective Management Organisations representing authors and composers respectively in Germany and in France) dated 30 January 2024:

• the market for generative AI in the music sector alone is estimated at around 300 million USD for the year 2023, and is expected to reach 3 billion USD by 2028 – this would correspond to 28% of global music copyright collections;
• 35% of music authors and creators declare having used AI technology in their creative work – this number rises to 51% for those under the age of 35;
• 93% of music authors and creators demand that policymakers “pay more attention to the challenges related to AI and copyright”.

2. Tips to verify copyrightability of works created with the help of AI

Unsurprisingly, there is a global consensus that copyright necessitates human authorship. Public authorities around the world have excluded copyrightability of contents exclusively generated by AI without human intervention. However, according to a Policy Questionnaire of the Council of the European Union dated 20 December 2024, EU Member States agree that AI-generated outputs may be protected by copyright provided they meet the existing requirements of copyright protection. AI-assisted creations reflecting the personality of the human author and resulting of his or her free and creative choices would thus be protectible. The same approach is taken by the US Copyright Office, who nonetheless stated in its Report “Copyright and Artificial Intelligence” of January 2025 that prompts input into the AI alone do not constitute sufficient human intervention, even with a high level of detail and successive revisions of the prompts.

Based on these principles, here are some things to consider for (human) authors using artificial intelligence to ensure that their creation may enjoy copyright protection:

• Do not limit yourself to written prompts: expression of your creativity may be more visible in outputs generated by other types of input that may be copyrightable in themselves (such as drawings or sounds);
• Use AI-generated outputs as intermediate steps: re-working and editing an output yourself will increase the likeliness of having the final product qualify as a “work”;
• If you insist on letting the AI do most of the heavy lifting: try rearranging and assembling multiple AI-generated outputs into one single piece, as a well-thought combination of outputs may yet be sufficiently original;
• Document everything: from your inputs to your very last tweak on the final work, make sure that you are in a position to prove the extent and intensity of your personal intervention in the creative process.

3. Useful links

For more information, please visit the following links:

https://www.gema.de/en/news/ai-study  

https://www.consilium.europa.eu/en/documents/public-register/public-register-search/?AllLanguagesSearch=false&OnlyPublicDocuments=false&DocumentNumber=16710%2F24&DocumentLanguage=EN

https://www.copyright.gov/ai/

Virtual Goods in Focus – EU General Court’s First Ruling

The General Court (GC) has issued its first-ever ruling on the distinctiveness of a trademark applied to virtual goods. The decision T11163/23 dated 11 December 2024 – “Glashütte ORIGINAL”  concerned the application for the following sign:

1. Background of the case

The European Union Trademark (EUTM) application no. 018727034 dated 1 July 2022 covered (inter alia) “downloadable virtual goods such as watches, clocks, and their accessories for online use or use in virtual worlds” (Class 9), as well as “retail services and the provision of these virtual goods” (Classes 35 and 41).

With EUIPO decision of 13 February 2023, the application was provisionally refused for the above-identified goods and services due to Art. 1 (1) (b) – lack of distinctiveness. The Examiner found, in essence, that the mark applied for would, for a non-negligible part of the relevant German public, evoke the reputation of the town of Glashütte (Germany) of excellence in the horological sector, in so far as, even in the context of virtual goods, the goods and services at issue all referred to horological goods and their accessories.

The appeal filed by the applicant on 12 April 2023 was rejected by the EUIPO Board of Appeal on 29 September 2023, who confirmed the EUIPO 1^st instance’s findings.

By its action to the General Court, the applicant, Glashütter Uhrenbetrieb GmbH – Glashütte/Sa., seeks the annulment of the EUIPO BoA decision of 29 September 2023 (Case R 773/2023-5).

2. The GC’s decision

The applicant relied on a single plea in law, alleging infringement of Article 7(1) (b) of Regulation 2017/1001. It complains that the Board of Appeal erred in finding that the mark applied for lacked distinctive character in respect of the goods and services. According to the GC, that single plea consists, in essence, of four parts, relating, first, to the reputation of the town of Glashütte in the horological sector, second, to the extension of that reputation to the virtual goods and services at issue, third, to the distinctive character of the figurative characteristics of the mark applied for and, fourth, to the registration of a similar mark.

However, while the GC dealt with the question of how to examine “virtual goods” and services related to such virtual goods, the Court missed the opportunity to establish new and specific examination criteria for this quite new category of goods by merely concluding that the relevant public would tend to interpret virtual goods in the same way as their physical counterparts.

Glashütte: A Symbol of Watchmaking Excellence

The GC confirmed that Glashütte, a town in Saxony near Dresden, is renowned for its tradition of high-quality watchmaking. This reputation shapes how the relevant public perceives the sign, even in the virtual realm: “(…) although it is common ground that the reputation of the town of Glashütte in the traditional horological sector does not currently extend to the field of virtual watchmaking, as the applicant claims, the fact remains that the goods and services at issue expressly refer to horological goods and their accessories”. According to the court, the public will view virtual watches in the same way as physical ones. As a result, the sign will not be perceived as an indicator of origin but rather as promotional information about the quality and authenticity of the goods.

The Transfer of Perception from Real to Virtual Goods

The GC noted that for virtual goods resembling or emulating physical goods, there is generally a transfer of perception: the relevant public tends to interpret virtual goods in the same way as their physical counterparts. However, this transfer must be assessed on a case-by-case basis, considering the specific nature of the virtual products and services.

In this case, virtual watches may represent physical watches or imitate their functions. Therefore, the public will directly associate the trademark with the reputation of Glashütte in traditional watchmaking. Consequently, the sign “Glashütte original” will be seen as a logical extension of the town’s reputation and as promotional information rather than a distinctive trademark.

3. Comment LexDellmeier

The applicant can still (and should) bring an action before the European Court of Justice (ECJ). There is a simple reason for that as several “Glashütte Original” trademarks are registered at the EUIPO and WIPO (e.g. EU 004821773 / IR). Some of these trademarks are also (still) protected for the goods “watches” (class 14) (real - not virtual...). After the GC’s latest judgment regarding “virtual goods” and the analogy to “real goods”, the question arises as to whether these registrations could possibly be challenged or be ready for cancellation due to lack of distinctiveness. From the point of view of a trademark practitioner and in view of the trademark owner’s interests, Glashütte should take action against this development.

For more information, please find extracts of the decision here: https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:62023TJ1163.

Has the European Union Intellectual Property Office (EUIPO) rejected your trademark application but the decision is not yet final? Consider withdrawing the application to keep the option alive to convert your application into national trademark applications in individual EU Member States – without the restrictions that apply to conversion after final refusal.

Background

If you file a new European Union trademark application, the EUIPO will, inter alia, examine if the applied for sign is distinctive for the designated goods and services in ALL of the European Union territory. If it is not, your application will be rejected – even if the bar to registration only exists in part of the EU. This is a consequence of the unitary character of a European Union trademark which grants protection in all 27 EU Member States with just one (1) registration.

Obviously, a rejection of your trademark application based on a lack of distinctiveness or a descriptive character in only part of the EU will not invalidate your desire and need for trademark protection in those parts of the EU where the application is not descriptive, but distinctive.

In such situation, the question arises whether or not – and at which point(s) in time - the applicant is offered the possibility to convert an European Union trademark application into national applications in individual EU Member States while keeping the application date of the European Union trademark application. Remember: The application date is important if your trademark ever has to be enforced as the EU applies a “first to register” regime and the party with the earliest trademark application date will have the best rights.

Once the rejecting decision has become final, it is clear that that applicant has the right to convert its EU trademark application and to file applications in such Member States for which the EUIPO did not find a lack of distinctiveness (or another bar to registration), see Article 139(2)(b) EUTMR. But what about converting your trademark application if the rejecting decision is not yet final?

On 22 February 2024, the Executive Director of the EUIPO filed a request (the first of its kind) with the Grand Board of Appeal for their opinion on a point of law regarding the possibility of conversion despite a not-yet-final decision refusing an applied for mark. Is it possible to convert an application that has been rejected by the Office but where the rejecting decision has not yet become final? And does it make a difference if an appeal – against the first instance decision or against the Board of Appeal decision - had been filed or not?

Upon publication of the request for a reasoned opinion, relevant stakeholders were invited to submit observation and the matter was discussed.

The Decision

On 15 October 2024, the Grand Board of Appeal of the EUIPO issued its opinion on the Executive Director’s request confirming the following (see R0497/2024-G):

• As long as the EUIPO’s refusal decision has not yet become final, the applicant may withdraw the European Union trademark application.
• It does not make a difference in which instance the application is pending, that is if the application is withdrawn during the period of appeal against the first instance decision, during the appeal proceeding or during the period to further appeal a Board of Appeal decision. There is no relevant distinction between these different periods in time as long as the refusal has not yet taken effect.
• After withdrawing an European Union trademark application, any examination and appeal proceeding becomes devoid of purpose and the possibility of requesting a conversion of the application into national applications in individual EU Member States is opened up.
• There is no restriction as to the Member States in which a national application can be requested following conversion. The restriction of Article 139(2)(b) EUTMR does not apply and a request to convert a withdrawn European Union trademark application into national applications, subsequent to its non-final refusal by the EUIPO, does not constitute an attempt to circumvent the prohibition of Article 139(2)(b) EUTMR.

Strategic Advice

When you receive a decision that rejects your European Union trademark application, consider carefully if you let it take effect or if you withdraw your application before the rejection becomes final as this will influence the scope of your possibilities to convert your European Union trademark application into national trademark applications in individual EU Member States.

Should you have any questions or if you would like to discuss possibilities to convert your European Union trademark application, you are welcome to contact us by email at info@lexdellmeier.com or by phone at 089 55 879 870.

NEW - International Comparative Legal Guide – Designs 2025 – NOW AVAILABLE

If you are looking for practical insights and intelligence on design law in different jurisdictions, the International Comparative Legal Guide published by glg Global Legal Group is a valuable source of information.

Recently published in its 5^th edition, the International Comparative Legal Guide – Designs 2025 covers the following countries (in alphabetical order): Brazil, Canada, Chile, Czech Republic, France, Germany, Ghana, Greece, India, Israel, Japan, Mexico, Philippines, Spain, Switzerland, Taiwan, Ukraine, United Kingdom and United States. The individual country chapters are similarly structured and provide directly comparable, annually updated Q&A chapters on different aspects of design law, inter alia, on application and registration procedure, on grounds for refusal and how to overcome them, on opposition and invalidity proceedings (if any) or on design enforcement and possible defenses.

This year, LexDellmeier was happy to contribute the country chapter covering Germany and we gladly invite you to review our chapter – and of course the rest of the legal guide should you look for design related information in one of the other countries.

If you enjoyed reading our country chapter for Germany, we will be glad to hear from you by phone at 089 55 879 870 or by email to info@lexdellmeier.com

Christmas is only a few weeks away! Now is the time for including gifts for your loved ones to your shopping lists. But as you browse through busy stores or infinite lists of products online looking for bargains, do not let the sweet vapours of mulled wine dull your senses. As the EUIPO and EUROPOL recently highlighted in a joint report published on 23 October 2024 on the ecosystem of Intellectual Property (IP) crime, counterfeit goods keep finding their way to our shelves and represent a staggering 5.8% of EU trade. The report sheds light on how much IP crime remains a threat to European consumers, how it is enabled, and how its impact could be mitigated.

1. The scale of the threat

According to EUROPOL and the EUIPO, IP crime can be defined as “theft, infringement and unauthorised use of intellectual property”. Criminal activity of this nature is not new and seems to be flourishing to this day: during the year 2022 alone, an estimated 86 million items infringing intellectual property rights were seized on EU territory for an overall value of over EUR 2 billion. Toys, cigarettes and DVDs were the most commonly seized items, but cosmetics, food products, pharmaceuticals and virtually every other category of goods is concerned. As a result, IP crime represents a serious risk both for consumers’ health and for the EU’s economy as a whole.

Disturbing examples according to the report:

- Counterfeit tobacco products worth EUR 17 Million were seized in France alone

- 260,000 litres of counterfeit olive oil were seized, unfit for consumption and posing a public health risk

- A Chinese money-laundering network was able to smuggle EUR 1 Million daily with proceeds from counterfeit goods trafficking

- Banned pesticides were smuggled and used in protected areas, putting the environment and public health at risk

2. Key findings and ideas

Interestingly, despite the potential health hazards of counterfeit goods, the report identifies the consumers’ own behaviour as one of the main drivers of the development of IP crime in the EU, if not the most important one. Consumer demand for low-priced items is currently high, due in part to the ongoing trend of the cost of living steadily increasing. Widespread access to internet, frequent use of social media and the rise of online influencers act as a catalyst to the sale of IP-infringing items by facilitating the coming together of consumers in search of cheap products and those in a position to offer them. As an example, a clandestine laboratory confectioning illegal anabolic steroids was dismantled in 2023, after social media influencers in Romania with popular dietary and nutrition channels promoted the drugs directly to their communities.

On the “sellers’” side, IP crime is now mostly driven by large, professional criminal networks operating not only in the EU, but on a global scale. Ingenious ways of acquiring, smuggling, transporting and retailing IP-infringing products are conceived in all parts of the world and implemented by groups with experience in other criminal activities, such as the forging of false documents (for instance, fake certificates to deceive consumers as to the origin of the goods to the detriment of Geographical Indication holders) or money laundering. Here too, innovation allows for profit, as cryptocurrencies are frequently used as means of payment for counterfeit commodities. To make matters even more complex for law enforcement authorities, real, legal instruments are abused to give criminal enterprises the appearance of legitimacy.

Overall, the report concludes that more law enforcement and judicial action is warranted in the fight against IP crime. Even more importantly, raising awareness of the general public to the dangers of IP crime and the sheer scale of the problem is a priority, as understanding and mitigating risks associated with counterfeit purchases is crucial for our wellbeing. So, if Santa Claus reads this, please be careful about what you put under the Christmas tree this year.

3. Useful links

For more information on the EUROPOL and EUIPO report, please visit the following links:

https://www.euipo.europa.eu/de/news/joint-euipo-europol-report-exposes-far-reaching-consequences-of-ip-crime-in-europe

https://www.euipo.europa.eu/de/publications/uncovering-the-ecosystem-of-intellectual-property-crime-a-focus-on-enablers-and-impact

Understanding Trademark Law Through the Lens of Halloween: A Spooky Guide

Halloween, with its pumpkins, costumes, and haunted houses, is one of the most exciting and creative times of the year. But behind the spooky masks and candy bowls lies a complex world of Intellectual Property Law, especially trademarks, which many businesses need to navigate carefully during the season.

The holiday is an ideal opportunity for businesses to launch special Halloween-themed products, from limited-edition packaging to pop-up stores. But as companies jump on the Halloween bandwagon, they must be wary of the legal risks lurking in the shadows – particularly when it comes to trademark law. Whether you’re a small business creating custom merchandise or a larger company launching a seasonal marketing campaign, understanding how trademark law applies during Halloween can save you from a legal nightmare.

What is a Trademark?

As you may know, a trademark is any word, phrase, symbol, or design that identifies and distinguishes the origin of goods or services of one party from those of others. For businesses, trademarks are essential assets that protect brand identity and consumer trust. They give companies the exclusive right to use a particular trademark in commerce, preventing competitors from using an identical or similar sign.

In the context of Halloween, think of famous symbols like the “Jack-o’-lantern” or phrases like “Trick or Treat.” While some generic symbols or phrases cannot be trademarked because they are widely used, unique designs or logos related to Halloween can be (and have been) registered as trademarks if they meet the legal requirements.

Halloween and Popular Trademarks

Halloween offers a wealth of creative opportunities for businesses, but it also carries the risk of unintentionally infringing on someone else’s trademark. For example, some popular costumes or merchandise inspired by movies, TV shows, and famous characters – such as Frankenstein’s monster, vampires, or superheroes – are often protected by trademarks or other intellectual property rights. Trademarks containing the term “HALLOWEEN” are protected via several EU trademarks for various goods and services (e.g. EU 000152512 “HALLOWEEN” for goods in class 3, EU 007101785 “HAPPY HALLOWEEN” for goods in class 30, EU 009220765 “A WHOLE LOT OF HALLOWEEN” for goods in classes 14, 16, 18, 20, 21, 24, 25, 26, 28).

A well-known example of a Halloween-related trademark battle is between Disney and smaller retailers. Disney has aggressively protected its trademarks, particularly around its Halloween-themed characters like Jack Skellington from The Nightmare Before Christmas. While businesses may be tempted to create costumes, decorations, or merchandise inspired by these beloved characters, they risk facing legal action from Disney if they don’t have the proper licensing agreements.

For businesses selling Halloween-themed products or costumes, it is critical to check whether the designs or names you’re using are already protected by someone else’s trademark. Ignoring this step could lead to costly lawsuits or cease-and-desist letters. For example, creating a product that uses the iconic silhouette of a famous Halloween character without permission can easily result in trademark infringement claims.

Don’t Let Trademark Law Haunt You

If your company plans to create a unique Halloween product or event, securing trademark protection can be a valuable strategy. Registering your Halloween-themed name, logo, or product design with the appropriate trademark office ensures that you have the legal rights to prevent others from using a similar mark. This not only protects your business but also strengthens your brand’s identity in the marketplace.

Before launching your product, conduct a thorough trademark search to ensure that your Halloween ideas don’t overlap with existing trademarks.

Halloween is a time for fun, creativity, and innovation, but businesses need to be mindful of trademark laws to avoid potential legal pitfalls. Whether you’re marketing a new spooky treat, hosting a Halloween-themed event, or designing merchandise, make sure you protect your intellectual property and respect the rights of others.

Happy Halloween – and stay legally safe! LexDellmeier will be happy to advise and support your company on questions of trademark law. Please feel free to contact us under info@lexdellmeier.com.

(Photo Source: Shutterstock Photo ID 2536795353)

If you are the owner of a registered patent, trademark or design (IP rights), you have surely received communication in the past that looked like it was an invoice coming from an official source, that mentioned the correct registration number of your IP right and that made you assume that you needed to pay this invoice to uphold your IP right. NEVER pay such “invoice” unless you have made sure that it is genuine.

Background

As IP attorneys, we regularly receive emails from clients forwarding letters that they received by mail asking us whether or not those letters are genuine and what they need to do.

Usually, if you register an IP right through patent attorneys or lawyers, the law firm will take care of all administrative measures that are necessary to uphold your rights. The firm will, in particular, monitor the renewal deadline for the IP right and remind you well in advance that and when payment is due. Any official reminder sent by an Intellectual Property Office will be sent to the registered representative of your IP right, but not to you as the owner.

If you directly receive communication and it looks like an invoice, it usually is spam and only intended to rip you off. Somebody not officially associated with an Intellectual Property Office is sending you the letter “offering” to renew your IP right, but the wording of the “offer” is so small that it is overlooked and people get the impression from the overall look of the letter, that it is an invoice that must be paid to avoid the expiry of a patent, trademark or design.

Upon receipt of such letter, a lot of people simply pay. And they pay a lot more than actually needed or they pay for services absolutely unnecessary.

Overall, these misleading invoices are very annoying and the Intellectual Property Offices have been warning about them for a long time.

Recent Decision By German Criminal Court

Recently, the European Union Intellectual Property Office (EUIPO) published information on its website about a German court decision issued in September 2024. The criminal court in Munich – based on a criminal complaint for suspected fraud filed by the EUIPO in December 2020 – found three defendants guilty of commercial gang fraud for sending misleading invoices to EUIPO customers. Each of the defendants was sentenced to 22 months' imprisonment, suspended on probation for three years. In addition, the court confiscated an amount of approximately EUR 200,000 which the defendants had unlawfully obtained with their “invoices”.

According to information from the EUIPO, this was only the second time that misleading invoices were deemed a criminal offence and were qualified as fraud by a criminal court in an EU Member State. The only other decision had been taken in Sweden in 2017 where the defendants were convicted of gross fraud.

Recommended Behavior

Based on the information above and to not become a victim of fraud, we strongly recommend that you do not pay any “invoice” that you receive in an IP matter unless you have clarified with the Intellectual Property Office or with an IP attorney that the invoice is genuine. For an initial check, you can refer to the list of scam letters and emails published by the EUIPO on the misleading invoices section on its website.

Should you have any questions or if you would like to know if an “invoice” that you received is genuine and should be paid to avoid the expiry of your IP right, you are welcome to contact us by email at info@lexdellmeier.com or by phone at 089 55 879 870.

Upon examining trademark applications, national trademark offices in the EU may refuse to register a sign that is contrary to “public policy” or “accepted principles of morality”. This somewhat lesser-known absolute ground of refusal of registration is provided for by Article 4(1)(f) of the Trade Mark Directive (EU) 2015/2436 (TMD). In an effort to further harmonise the practices of the Member States’ Intellectual Property Offices, the EU Intellectual Property Network has issued a dedicated “Common Practice” to provide more clarity on this ground of refusal to the national Intellectual Property Offices.

1. What is a “Common Practice”?

Examination procedures of EU Trademark and Design applications are famously described in detail in the EUIPO’s Guidelines. At a national level, the EU Intellectual Property Network brings together the EUIPO with the national and regional IP Offices of the EU to develop common examination standards and practices in all IP matters. This effort includes the establishment of Common Practices aimed at providing guidance to the national IP Offices, in particular with regard to the examination of trademark applications.

2. New guiding principles on Article 4(1)(f) TMD

As of 19 July 2024, Common Practice 14 was implemented by all national IP Offices in the EU. The objective is not to impose a certain view on what is or should be seen as lawful in each EU Member State, but rather to facilitate a common understanding of the concepts of public policy and accepted principles of morality, as well as define common criteria for assessing Article 4(1)(f) TMD.

According to the new Common Practice, the contours of both concepts may vary from Member State to Member State and evolve over time. But overall, “Public policy” consists in a set of fundamental norms, principles and values of societies in the EU at a given point in time. This includes the universal values of the EU laid down in the Treaty of Lisbon of 13 December 2007. “Accepted principles of morality” refer to the fundamental moral values and standards accepted by the society in the EU at a given time. Thus, the former derives from reliable, objective sources such as EU legislation or case law, while the latter implies an empirical assessment of what the acceptable norms of conduct are in a given society at a given time (which corresponds for instance to religious, cultural or social standards).

As for the assessment of the trademark application against the ground of refusal, IP Offices need to proceed on a case-by-case basis considering the normal level of sensitivity and tolerance of the relevant public as well as the circumstances specific to the Member State concerned. All possible meanings of the examined sign must be identified and analysed. Then, Offices will determine whether the goods and services and the context in which they will be offered may accentuate or mitigate the objectionable meaning of the sign: as an example, registering “Kill them all” for insecticides would be acceptable, but not for daycare services for babies. CP14 also includes a reminder of the established EU case law whereby freedom of expression should be taken into account in the assessment of the sign, although no guidance is provided as to how this should be done.

3. Useful links

For more information on CP14, please visit the following links:

https://www.euipo.europa.eu/de/news/trade-marks-contrary-to-public-policy-or-accepted-principles-of-morality

https://www.euipo.europa.eu/es/news/publication-and-implementation-of-cp14

https://www.tmdn.org/publicwebsite/#/practices/2547782

State-of-the-art IP management in the year 2024 requires in-depth expertise and an outstanding cloud- and AI-based software. As an interdisciplinary team of lawyers and patent attorneys as well as computer scientists, engineers and physicists, the IP firm LexDellmeier - www.lexdellmeier.com - and the  German-based software company IP Servant GmbH - https://www.ip-servant.com - helps

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• your IP department in the company or
• your IP law firm

with the strategic planning and implementation with respect to

• the digitalization of your files, 
• the introduction or improvement of processes & workflows
• the implementation of the cloud- and AI-based IP software “IP Servant”

as well as training your employees with the aim of 

• cost savings (including staff), 
• increasing efficiency and 
• the reduction of errors.

The Munich law firm LexDellmeier - Intellectual Property Law Firm - www.lexdellmeier.com - together with the German-based software company IP Servant GmbH - https://www.ip-servant.com/ - offers know-how and expertise based on almost 40 years of experience and use of the IP software “IP Servant” in companies and law firms.In the past two years we have set up five firms and companies and imported approx. 19,000 files and intellectual property rights.

Whether you are just starting out or want to switch from an existing software - we stay at your disposal. Please feel free to contact us at any time.

In case of interest, please feel free to participate in one of our 60-minute free webinars showing how to manage trademarks, designs, utility models, patents etc.

Please note that the WEBINARS will be held in GERMAN at this point in time.

WEBINAR DATES (in German):

• DIENSTAG, 15. Oktober 2024, 10.00 – 11.00 Uhr

Link zur Anmeldung auf Eventbrite

Titel: „IP Software und IP Management“

• DIENSTAG, 26. November 2024, 15.00 – 16.00 Uhr

Link zur Anmeldung auf Eventbrite

Titel: „IP Software und IP Management
 

AGENDA der Webinare:

1. Vorstellung Software „IP Servant“ (Cloud und KI-basiert) & Kanzlei LexDellmeier
2. Übersicht & Hauptfunktionen der IP Software (Cloud und KI-basiert)
3. Bedeutung, Kosten- und Zeitersparnis bei zielführendem IP Management

                Fokus: Verwendung im Unternehmen / IP Abteilung

• LIVE Demo: Rollen & Berechtigungen – einfache Handhabung
• Übersicht Portfolios (Marken, Designs, Gebrauchsmuster, Patente)
• LIVE Demo: Akten- und Fristenverwaltung / Korrespondenz

                Fokus: Verwendung in der Kanzlei

• LIVE Demo: Benchmarking, Aktenanlage, Zeiterfassung, Rechnungsstellung

Fokus: Kombination: Externes IP Management durch externe Kanzlei LexDellmeier

• LIVE Demo: Datenexport und -import (Portfolios, Fristen, etc.)
• LIVE Demo: Komplett outgesourctes IP-Management und Mandanten-Zugriff

4. Schnittstellen

• Künstliche Intelligenz (KI)
• DATEV
• PAVIS
• DPMA, EPA, etc.

5. Software IP Servant - Preismodell/Pakete/30 Tage kostenlos testen
6. Fragerunde