IP In The News – 16 September 2015


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Summary: Our regular update on developments in the world of IP, this week featuring an ECJ ruling on the protection of shapes as trade marks and the decision of a Chinese court involving US sports brand New Balance.

Shapes and trade marks

The ECJ has answered three questions referred to it by the UK Court regarding the protection of shapes as trade marks (the case concerned the shape of the KitKat chocolate bar). The Court confirmed that whilst it is possible for a combination of exceptions to trade mark protection to apply to a trade mark (e.g. features necessary to obtain a technical result, or which result from the nature of the goods themselves), protection will only be deprived on that basis if one of the exceptions applies to the whole shape of the mark.

Further, the technical result exception only applies to how the relevant goods function, not to how they are manufactured. Finally, the Court confirmed that when considering the shape of goods as a trade mark which has acquired distinctiveness through use, that shape alone must act to identify the goods to the consumer, without taking into account other trade marks used with the shape (so, for example, the shape of the KitKat bar must be recognised in itself, without reference to the fact that it is sold under the KitKat name).

Chinese character names and trade marks

The decision of a Chinese court ordering US sports brand New Balance to pay $16m to the owner of a Chinese trade mark for the Chinese character name which New Balance had used in China for more than 10 years demonstrates the importance of trade mark searches and protection for Chinese character marks of brands.

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