Bad faith is on the rise – whether in reality or as a useful weapon against trade marks is another question. Recently, both the General Court (GC) and the Court of Justice (CJEU) have had several opportunities to consider whether trade marks had been filed in bad faith. The tendency seems to become stricter and…

By the end of June, the US Supreme Court will have ruled on the registrability of scandalous and immoral marks in Iancu (USPTO) v Brunetti (No. 18-302). The case raises the issue of whether, in light of free speech under the First Amendment, a ban on the trademark registration of “immoral” or “scandalous” marks should…

With decision of 15.10.2018 on case T-7/17, the General Court (GC) has clarified an important factor for applicability of Article 8(3) EUTMR, on the prohibition for registration of a trademark filed by an agent or a representative of the trademark owner. However, as the GC’s decision has been appealed (C-809/18 P), we will have to…

The Danish Parliament, Folketinget, passed a new Danish Trademark Act (TMA) on 20 November 2018. The TMA implements the harmonisation of the relevant EU directive (Directive (EU) 2015/2436 of 16 December 2015). The new TMA will implement a number of changes, including: It becomes optional whether or not to have earlier rights cited during the…

Sometimes cases are not really that interesting for their outcome, but rather for how the Courts get there. In this case, Wajos GmbH filed a 3D mark consisting of a glass container, shown below, designating various goods in classes 29, 30, 32 and 33. The EUIPO’s examination division and Board of Appeal (BOA) held that…

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…

On 25 July 2018, the CJEU handed down its ruling in the latest edition of the battle between Nestlé and Mondelez over the KIT KAT shape (C-84, 85, 95/17 P). This time, the discussion focused on whether a non-traditional EU trade mark that is not inherently distinctive must be shown to have acquired distinctiveness in the…

Puma´s earlier mark Applicant´s mark       By judgment of 28 June 2018 (C‑564/16 P), the CJEU rejected an appeal filed by the EUIPO. The case was, in essence, about whether and to which extent the EUIPO could or even had to take into account its own previous decision practice, including findings of fact…

Cour de Cassation, Chambre Commerciale, January 31, 2018, Appeal No. C 16-10.761 The French Supreme Court emphasizes that the reputation of the earlier mark is a relevant factor in the assessment of likelihood of confusion and gives it wider protection. In 2009, adidas initiated an infringement action in France relying on its famous three stripes…

It does not happen every day that you can see a trademark case decided by the EU General Court with a Polish claimant (EUTM applicant), represented by his Polish attorney, with a Polish judge as the rapporteur and even with Polish national acting as the EUIPO’s representative. One of very few non-Polish aspects of this…