An efficient, reliable and cost-effective route for protecting trademarks globally through the Madrid Agreement or the Madrid Protocol will be beneficial for IP-right holders. For a period of five years from the date of the international registration, the protection resulting from the international registration remains dependent on the BASIC application or registration also known as…

The Czech Supreme Court issued a judgment in the case of Fiskars Corporation against Mountfield a.s. (23 Cdo 5955/2017-231 dated 29 May 2019). Fiskars sued Mountfield, a home improvement and gardening retailer, among others, for trademark infringement consisting in illegal parallel imports from North America to the EU of Fiskars branded axes. The defendant did…

The so called “growth decree” (decree-law no. 34/2019, amended by the Italian Parliament as law 58/2019 in June 2019) has introduced a new category of marks in Italy: “historic marks” defined as those marks registered or used continuously for a period of at least 50 years to market products or services “made by an Italian manufacturing company of excellence, which…

London’s weather was very generous to AIPPI participants this year. It was not so hard to get up early and attend the breakfast panel on Genuine Use of trademarks organized by Wolters Kluwer as part of the 2019 AIPPI World Congress in London. The panel was moderated by Eléonore Gaspar (DTMV, France). Eléonore presented the…

The German manufacturer’s participation in tradeshows in Colorado was “by chance” and did not indicate “purposeful availment” of the forum state, and its efforts to enforce its asserted trade dress occurred outside Colorado. A German company that manufactured ceramic components of medical prostheses was not subject to personal jurisdiction in Colorado, with regard to a…

The concept of genuine use of a trademark should be the same for all sorts of products/services, but for pharmaceuticals this is not always the case. Given the particular regulatory regime which applies to pharmaceuticals, often many years pass before the marketing authorization to any given new pharmaceutical specialty is granted. During that time, do…

In Denmark – as in the EU – it is possible to overcome an absolute ground for refusal based on non-distinctive character of the mark applied for if the applicant is able to provide proof that the mark applied for has acquired distinctive character through use prior to the application date, see Article 7(3) EUTMR…

The panel remanded an award of attorney fees and prejudgment interest based on its new precedent on what makes for an “exceptional” case for purposes of Section 35 of the Lanham Act. The U.S. Circuit Court in New York City has upheld a lower court determination that retailer New York & Company’s infringement of women’s…

What are the limits as regards the use of a well-known trademark to promote a contest? In two similar circumstances, two Spanish courts have reached different conclusions. In this article, we will analyze the circumstances of the legal proceedings and the dissonant approach taken by the Spanish courts: INDITEX v BUONGIORNO In this case, the…

In a recent ruling from 15 August 2019 (BS-6392/2019 SHR) the Danish Maritime and Commercial High Court found that the conditions for issuing a preliminary injunction against the clothing company Message A/S (Message) had not been fulfilled since the alleged infringement did not constitute a sufficient basis for issuing a preliminary injunction. According to the…