The EU has published a trade mark reform package for 2016, comprising a new Community Trade Mark (CTM) Regulation and Trade Mark Directive.

The Regulation, which sets out the rules and procedures governing CTMs, will come into effect on 23 March 2016. The updated Trade Mark Directive will introduce a number of similar provisions in respect of national trade mark systems, however, its provisions will not come into effect until January 2019.Continue Reading Trade Mark Reform Scheduled for 2016

The political machinations continue at EU level and predictions for publication of a final form Data Protection Regulation increasingly refer to 2016 as the likely date. But to read behind the headlines continues to be a useful exercise for corporates who need to give real consideration now to what their regulatory landscape might look like in the not too distant future.

A key issue will be determining the place of “main establishment” which in turn will determine the appropriate lead authority.

If that isn’t clear, or there is disagreement, it is being proposed that an EU Data Protection Board (EDPB) would have power to make a binding determination.Continue Reading Data Protection Reform – One Stop Shop Complexity

Great day today attending the Health Informatics Society of Ireland 2014 Annual Conference.  In our Data Protection for Healthcare workshop together with Sarah Reade, Lead ICT Project Manager, Saint John of God Hospitaller Ministries and Jim Gregg, Irish Computer Society, we had a lively discussion on the data protection challenges faced by medical practitioners in the context of research and access requests. Continue Reading Health Informatics Society of Ireland 2014 Annual Conference

Italian publishing company Arnoldo Mondadori Editore SpA has had an appeal dismissed by the General Court in opposition proceedings brought against the registration of the mark GRAZIA.  In 2008, Grazia Equity GmbH sought to register a community trade mark in respect of the word sign GRAZIA under Classes 35 and 36 of the Nice Classification (business consultancy and financial services). 

Mondadori filed an opposition based on an earlier mark for GRAZIA under Classes 3, 9, 16, 18, 25 and 38.  In rejecting the opposition, the Opposition Division of OHIM said that there was no likelihood of confusion as the goods and services concerned were not similar.  Mondadori argued before the OHIM Fourth Board of Appeal that an overall assessment of the likelihood of confusion should have been considered, such as the fact that the mark was well known to the relevant public and that Article 8(5) of the Community Trademark Regulation 207/2009 should apply.  Mondadori filed a further appeal at the General Court when that argument was rejected and unfounded.Continue Reading No confusion between GRAZIA marks

In an important decision for unregistered design right holders, the Court of Justice of the European Union (the CJEU) delivered its judgment yesterday in Karen Millen Fashions Ltd v Dunnes Stores (Case C-345/13).


Karen Millen Fashions, a well-known British clothing retailer, claimed infringement of their unregistered design rights in three items of clothing by Dunnes Stores, a large Irish retail chain. The Irish High Court granted relief to Karen Millen in the form of an injunction restraining Dunnes Stores from using the designs and also in damages. Dunnes Stores, although not denying that it had copied the Karen Millen designs, appealed the decision to the Irish Supreme Court on the grounds that the items of clothing did not have individual character within the meaning of Article 6 of Regulation 6/2002 (The Regulations) and further that Karen Millen Fashions Ltd were required, under the Regulations, to prove that the design had individual character.

The Irish Supreme Court in turn referred two questions to the CJEU under the preliminary reference procedure.Continue Reading CJEU rules on unregistered design rights

The English High court has exercised jurisdiction in relation to foreign designations of a European patent. Arnold J gave a lengthy judgment of 376 pages, for which he made no apology, in the action between Actavis and Eli Lilly (Actavis UK Ltd & Ors v Eli Lilly & Company [2014] EWHC 1511 (Pat)). While there were a significant number of issues between the parties, the validity of the patent was not contested.

Actavis, a generic pharmaceutical company, had sought declarations of non-infringement in relation to the UK, French, Italian and Spanish designations of Eli Lilly’s European patent for an anti-cancer drug. The Court, in applying English law, held that they were entitled to such declarations despite the challenge made by Eli Lilly that the English court did not have jurisdiction over the foreign designations.Continue Reading UK ruling in multi-jurisdictional patent action

On 12 March 2014, the European Parliament voted in favour of the revised draft EU Data Protection Regulation.  To become law the proposed Regulation must be adopted by the EU Council using the "ordinary legislative procedure".  The EU Council is due to meet in June 2014.


The proposed Regulation was originally presented by the European Commission on 25 January 2012.  It has been the subject of voracious debate both in Brussels and across the EU, and has been subject to much re-drafting.   
 Continue Reading European Parliament Approves Draft EU Data Protection Regulation

Zatori Results Limited, an online retailer, has initiated High Court proceedings against Shop Direct Ireland Limited, trading as Littlewoods Ireland, seeking a High Court injunction preventing the defendant from selling their version of a Christmas jumper. They are also seeking damages for alleged infringement of its unregistered design rights, with sales of their jumper down 75% compared with sales in 2012.

The jumper in question was initially designed and sold by the Plaintiff in 2012 and became a commercial success, being one of the top selling Christmas jumpers on Amazon. Their design features a snowman, Christmas trees and stars on a navy blue background, similar to the alleged infringing jumper being sold by the Defendant.Continue Reading Festive Battle in the High Court

Waterford sampled success this week when it obtained the European Union’s Protected Geographical Indication (PGI) for its unique "Blaa" bread rolls. The floury favourite (which reportedly dates back to the 1690s Huguenot bakers) has risen through the ranks to join other culinary delights such as Parma Ham, Feta cheese and Cornish pasties at this level of legal protection. A PGI denotes a link with an area in at least one of the stages of production, processing or preparation. Waterford’s acquisition of a PGI for Blaa means this specific type of bread can only be called by its famous name if made in the south eastern county. Continue Reading Waterford Blaa Rises Above The Rest