The preliminary injunction was vacated, however, with respect to products the licensee held in inventory and that the mark owner did not seek to repurchase under the parties’ license agreement. A former licensee’s continued use of various marks for science toys after the license expired was likely to cause consumer confusion, the U.S. Court of…

On 28 May 2020 the General Court rendered its most recent ruling regarding enhanced protection of trade marks with a reputation (T-677/18; available in French and Spanish). Two issues are of particular interest in this judgment. First, how to prove reputation, as well as distinctiveness, of a mark consisting of the shape of the product…

The business owner’s purported plans to expand to the United States market were vague and conclusory, and his filing of a U.S. trademark application had little bearing on his ability to expand his business to the United States. A Manhattan federal district court did not err in dismissing a Thai resident’s declaratory judgment action seeking…

On 30 April 2020 (C-772/18), the Court of Justice of the European Union (“CJEU”) addressed a contentious issue in trademark enforcement. It discussed the definition of “use in the course of trade”, especially as opposed to storing or importing in counterfeit trade. The CJEU examined Article 5(1) and (3)(b), (c) of Directive 2008/95 at the…

On 30 April 2020, Advocate General Giovanni Pitruzzella (AG) delivered his opinion in the matter C809/18 P related to the conditions for application of Article 8(3) of Regulation 2017/1001 which provides a specific ground for refusal allowing owners of, in practice foreign, marks to oppose filings for EU trade marks made by their agent or…

The UK High Court has laid out its ruling following CJEU’s decision on SkyKick. To recap, the CJEU ruled that overly broad specifications will not automatically render a registered mark invalid and that the lack of intention to use the mark at the time of its application will not necessarily result in bad faith. What…

Russian law provides an effective instrument for preventing and detecting import of counterfeit goods and parallel import – the Customs Register of Intellectual Property (“Customs IP Register”). The Customs IP Register is kept by the Russian Federal Customs Service (“Customs”). According to the official information, at the beginning of 2020 there are more than 3200…

Evidence supported the finding that marks owned by the operator of the San Diego Comic Convention were not generic, and litigation misconduct by the defendant supported a $3.9 million attorney fee award. In the long-running trademark dispute between the operator of the well-known San Diego Comic Convention and a competitor that ran a similarly named…

Expired utility patent described the advantages of product configuration trade dress for “a beveled scalloped upper edge of a metal fastener.” The federal district court in Chicago properly determined trade dress for the design of conveyer belt fasteners owned by Flexible Steel Lacing Company (Flexco) was invalid as functional and could not be asserted against…

Red Bull GmbH v Big Horn UK Limited & Ors [2020] EWHC 124 (Ch) This case is an interesting commentary on the route that rights holders can pursue in order to challenge lookalike products. Historically, proprietors of well-known brands, particularity in the FMCG market, have found it difficult to succeed in an Article 9(2)(b) claim…