A Brexit reminder, Stag trade marks and the Global Innovation Index

Good morning everyone,

Here is your weekly IP update from the EU IP Helpdesk team:

Reminder: Deadline to extend EU Trade Marks to the UK

One of the consequences of Brexit is that EU trade marks no longer cover the United Kingdom. Therefore, if you wish to have your trade mark protected in the UK, an application must now be filed with the UK Trade Mark Office.

As part of the Brexit deal, an agreement was reached between the UK and the EU to allow holders of EU trade marks (or EU trade mark applications) to extend them to the UK. Note that September 30 2021 (next Thursday) is the last deadline to extend EU trade mark applications which had been filed with EUIPO by December 31 2020 to the UK.

This means that if you had a trade mark application pending with the EUIPO on December 31^st of last year, you may still apply to have it protected in the UK by filing the corresponding application with the UKIPO by next week.

Jägermeister and stag trade marks

The French company “Les Bordes Golf International SAS” filed a trade mark application consisting of a stylised symbol of a stag’s head facing forward and the underlined verbal element “Les Bordes”. Unfortunately for them, there already exists a brand consisting of a stag’s head facing forward most of us know all too well, owned by the German company Jägermeister.

Jägermeister accordingly filed an opposition, arguing that the signs were similar enough to create a risk of confusion in the eyes of the consumer between the two marks.The EUIPO’s Board of Appeal agreed with Jägermeister’s arguments.

It decided that while the signs were not identical (the Jägermeister trade mark also includes a circle and a cross, the sign filed by “Les Bordes” contained the aforementioned verbal element), the essential graphic element was that of the stag’s head facing forward, on which the Board of Appeal accordingly focused its attention. The other elements were decided to be only of secondary importance as these details did not play a decisive role in the memory of the consumer at the time of comparing trade marks in his or her head.

While the central element clearly dominating both signs was not strictly identical, it was found to be visually and conceptually similar enough to entail a likelihood of confusion.

This latest decision serves as a useful reminder that the degree of similarity between trade marks should not be considered as an absolute: indeed the two trade marks here, when compared side to side would not be confused with one another. What matters with whether the relevant consumer (here it could be you average supermarket shopper) and the level of attention he or she might give to the details of a trade mark.

WIPO issues its annual Global Innovation Index (GII)

The World Intellectual Property Organisation (WIPO) issued its annual report on the state of global innovation this week, ranking the innovation performances of economies around the world by comparing different metrics related to investments in science and innovation the creation and protection of intellectual property rights, especially patents.

One of the key findings which stand out is that, unsurprisingly, many economies have ramped up their investments in scientific investigations in the light of the Covid-19 pandemic. As one might expect, sectors which saw investments rise during the pandemic include biotech & pharma and ICT while sectors which were heavily hit by the containment measures such as transport and travel were severely hit and saw investments shrink.

It is to be noted that the majority of countries in the Top 25 of this year’s GII are from Europe, with Sweden (2^nd) found once again to be the most innovative EU economy, for the third year in a row.

We invite to read up on WIPO's findings here.