The CJEU ruled again on jurisdiction (after Hummel Holding, C-617/15) in BMW AG v Acacia Srl (C-433/16), focusing in particular on the relationship between Reg. 44/2001 (“Brussels Regulation”) and Reg. 6/2002 (“CDR”). The case started when Acacia – an Italian manufacturer of replica car rims – filed an action seeking a declaration of non-infringement (“DNI action”) of some BMW’s…

In the recent decision W.F. Gözze Frottierweberei Gmbh, Wolfgang Gözze GmbH v Verein Bremer Baumwollbörse, case C-689/15, the European Court of Justice (ECJ) analyzes an issue which the EUTMR rules do not clearly resolve, i.e. whether or not a licensed EUTM registration may be invalidated if the owner fails to carry out quality controls on licensee/licensees’ products. The dispute arose between a German cotton textiles industry association (the…

With decision C-617/15, (Hummel Holdings A/S v Nike Inc., Nike Retail BV) the Court of Justice (CJ) has defined the concept of “establishment” under article 97 of EUTMR (now art. 125 Regulation 2017/1001). According to article 98 (now art. 126) EUTMR, pan-European injunction can be granted if the Court seized has, according to art. 97 the…

The case of CWS-Lackfabrik Conrad W. Schmidt GmbH & Co. KG v Policolor, looks at traditional issues as likelihood of confusion, but also at the thorny issue of whether earlier rights need to be valid at the time of issuing a decision or only at the relevant date for the cause of action. Lackfabrik owned the…

Can a scooter enjoy, contemporaneously, protection as a three-dimensional trademark (hereinafter 3D mark) and under copyright law?  Apparently it can, at least according to the Court of Turin, which recently said so, with its decision no. 1900/2017 dating March 17, 2017. The case was started when Piaggio, maker of the scooter Vespa, asserted rights arising…

  After some 10 years, the Lambretta saga has finally come to an end, but it might not really matter that much… anymore. LAMBRETTA is a famous vintage brand for scooters, which has been acquired by Scooters India Ltd (yet another famous European vehicle brand that has landed in India). While the scooters as such have not…

We all know that acquiescence is an absolute defense against infringement which occurs when a proprietor of an earlier mark has acquiesced, for a period of five successive years, to the use of a later registered trademark while being aware of such use. However, neither EU nor Italian (or, to our knowledge, any other national) trademark…