In law, perhaps one of the most famous aphorisms is “I know it when I see it”, which Justice Potter Stewart used to describe his threshold test for obscenity (in Jacobellis v. Ohio,  378 U.S. 184 (1964)). The CJEU, in case C‑310/17, delivered a decision on copyright which in a way confirms this aphorism and…

In what has been considered a surprising decision (see for example previous comments in this blog here), the CJEU has recently held that the proprietor of a mark is entitled to oppose a third party which, without the proprietor’s consent,  removes the sign from products and affixes other signs in its place, with a view…

This case is about the genuine use of shape marks. M J Quinlan & Associates PTY Ltd. of Australia own a 1999 registration for the shape of a kangaroo. The mark is protected for potato snacks and potato crisps. The plaintiff owns or owned a patent and design rights to the kangaroo-shaped crisps which were…

In BASIC NET SpA vs EUIPO, (case C-547/17 of Sept. 6, 2018), shortly after the recent Nestlè/Mondelez KIT KAT case (C‑84/17P, C-85/17 P and C-95/17 P; see ‘CJEU on the Kit Kat shape and acquired distinctiveness of EU trade marks for shapes’ in this blog), the CJEU again tackled the issue of how and where…

In the EU, any third party in possession of genuine goods put on the market in the European Economic Area (EEA) by the trade mark owner or with the trade mark owner’s consent is free to resell those goods within the EEA. This is because the EU imposes a system of “regional exhaustion”, which means…

EU Design law denies protection to designs which are solely dictated by a product’s technical function (art. 8(1) CDR). But how to determine if a product’s appearance is solely defined by its technical function in order to deny protection to a design? German courts, for instance used to apply the “multiplicity of forms” test, where…

The Benelux trade mark system will undergo two important changes as per June 1, 2018. Appeals from decisions of the Benelux Office for Intellectual Property (BOIP) Until now appeals from decisions of the BOIP in opposition cases were brought before the courts of appeal of The Hague, Brussels or Luxembourg (with further appeals on questions…

On 6th December 2017, the ECJ issued its judgement in the matter Coty / Akzente. The judgement is essentially about three questions: 1)         Does the luxurious nature of products or trademarks justify a selective distribution system or did the Pierre Fabre judgement of 2011 put an end to that justification? 2)         Does a selective distribution…

With decision C-425/16 of October 19, 2017, the European Union Court of Justice (“CJEU”) pronounced on whether or not EU national courts can dismiss an infringement action without first ruling on a counterclaim for invalidity, and if the courts must wait until the decision on the counterclaim is final. The issue arose from a request of…