A trade mark is a distinctive sign which indicates the origin of goods and services, usually refers to a registered trade marks
The scope of protection of a trade mark registration is a key question faced by trade mark practitioners when advising on rebrands. The recent Oatly case [Oatly AB v Glebe Farm Foods Limited [2021] EWHC 2189 (IPEC)] raises some interesting questions in the context of a likelihood of confusion and unfair advantage. Oatly owned a…
The ”Pearl” decision by the Federal Supreme Court (BGH) may not be brand new (15 October 2020), but it is interesting in many respects. This post will deal with the similarity of goods. Facts The plaintiff owns an EUTM, registered in 2009, and a German registration, from 2003, for the word PEARL. Both are protected…
As with other aspects of trade mark law, the UK and EU have adopted asymmetrical arrangements about exhaustion post-Brexit. The arrangements result in uneven outcomes on enforcement against parallel imports for UK and EU right-holders. It remains to be seen how the principle of exhaustion of UK rights will develop in the hands of the…
Guerlain, the luxury French perfume, cosmetics and skincare house, has emerged victorious in their three year-long attempt to obtain registration of a three-dimensional EU trade mark in respect of the shape of one of their lipsticks (the mark applied for shown below): Application before the EUIPO and the Board of Appeal The…
It is a common occurrence in the lifetime of a brand for ownership to change. In some cases, multiple times as part of corporate restructuring or the sale of a brand. The cost and process for recordals can vary significantly in different countries. Generally, it is recommended that ownership be updated with local Trademark Offices….
According to the German Federal Supreme Court’s decision of 29 July 2021 (Case I ZR 139/20) the gold-colored foil of Lindt’s chocolate bunny is protected by a trademark acquired through use. The Court lifted the decision of the Higher District Court Munich which had rejected an infringement action against a competing product denying trademark protection…
The Brexit transition period has come and gone, and we are now almost 8 months into our post-EU life. One thing we can all agree on is that the way we work and the processes we use have been hit fairly hard. It will come as no surprise that the governmental bodies dealing with the…
We are happy to announce the new International Law Talk Podcast episode on Bad Faith in European Trademark Law. For this episode I had the honor of speaking with the leading expert in the field: Alexander von Mühlendahl, former Vice-President of the EUIPO, prior to that deeply involved in the creation of EU trademark law,…
We all felt that after the Red Bull decision (Case C-124/18, see here at https://trademarkblog.kluweriplaw.com/2019/08/13/no-monopoly-on-blue-and-silver-for-red-bull/), pure colour combination marks were a thing of the past. However, like in any respected zombies’ movie, they are back even though, for how long is not so certain. The General Court in case T-193/18 decided on March 24, 2021,…
In a recent decision by the First Board of Appeal, Gleissner’s Sherlock Systems satisfied the test for abusive practice in its attempted revocation of the mark, KEYNOTE. Gleissner is infamous within IP circles for his large portfolio of domain names, companies and trade marks, with seemingly little to no goodwill as a foundation. The strategy…
