Deutsche Telekom’s Benelux trademark registration for a magenta colour mark was invalidated by the Benelux Office for Intellectual Property (BOIP) because it was unable to prove acquired distinctiveness throughout the Benelux[1]. The decision is an important reminder that non-traditional trademarks are often found to be ab initio devoid of distinctive character, and that the bar…
In a recent dispute concerning the use of the geographical indication (GI) and Protected Designation of Origin (PDO) “Salaparuta” for Sicilian wine, the Italian Supreme Court has deferred to the Court of Justice of the European Union (CJEU) in order to determine the validity of this GI/ PDO as well as if co-existence is possible…
Morality and public policy considerations are oft-forgotten as absolute grounds of refusal. However, in the recent “COVIDIOT” case, the EUIPO’s Grand Board of Appeal upheld an earlier decision to refuse an EUTM application pursuant to Article 7(1)(f) EUTMR on the grounds that the applied-for trade mark violated accepted principles of morality. The application was for…
Swatch sued Samsung for trademark infringement, arguing that Samsung allowed users to download infringing watch face apps from its Galaxy App Store (“SGA”). The Samsung case[1] shows that the UK courts will take a different view, however, where a tech provider plays an active role in providing an ecosystem for third-party developers. We have previously…
Diesel SPA (hereafter Diesel Italy) began selling jeans in Italy in 1978. The jeans were sold in Ireland from 1982 onward. In the intervening years, a company based in Monaghan also started to produce jeans under the name Diesel (hereafter referred to as Diesel Ireland). When Diesel Italy applied to register a word and a…
In the third (and final) of our blogs reporting on the UK Court of Appeal decision in Lidl v Tesco, we examine the findings in relation to non-use revocation. At first instance, the judge found that certain trade mark registrations filed by Lidl in 1995, 2002, 2005 and 2007 for its ‘logo without text’ (the…
This is the second of three blogs examining the recent UK Court of Appeal decision in Lidl v Tesco[1]. As reported in our first blog, the Court of Appeal upheld the High Court’s finding of trade mark infringement and passing off by Tesco in respect of Tesco’s use of a blue and yellow sign for…
This is the first of three blog posts examining the UK Court of Appeal’s decision in the highly publicised dispute between Lidl and Tesco, concerning Tesco’s use of a blue and yellow sign (the “Tesco Sign”) for its Clubcard promotions. In a decision handed down on 19 March 2024, the Court of Appeal upheld the…
In her ‘Happy new year‘ (30 December 2022) post on this blog ‘Trademarks in Luxembourg‘ Verena von Bomhard shortly referred to the ECJ’s Classic Coach (C-112/21) decision of 2 June 2022 as relating to ‘the complex relationship between trademarks and earlier unregistered local and trade name rights‘. In the meantime, the matter returned to the…
Recent posts have examined the UK courts’ approach to IP law post-Brexit, and have examined decisions handed down shortly before the coming into force of REULA on 1 January 2024 (the UK legislation marking the end of the supremacy of EU law in the UK). A further Court of Appeal decision from the end of…
