Trademark squatting involves registering a trademark identical or similar to an established brand to profit from its reputation. This practice thrives in jurisdictions with weaker trademark laws, often forcing disputes to hinge on bad faith arguments in court. Nowadays, the phenomenon has been evolving and taking various forms. For example, trademark squatters now register domain…
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…
The Chinese company acted with the requisite bad faith under the ACPA when it bought and re-registered the domain name, which was identical to several registered trademarks owned by the insurance and financial services giant. A Chinese Internet company that distributes financial and economic information to Chinese consumers had the bad faith intent to profit…
As of January 14, 2023, actions for revocation and invalidity of Spanish trademarks can be filed through administrative proceedings before the Spanish Patent and Trademark Office (“SPTO”). This is expected to make cancelling a trademark, quicker, cheaper, and more flexible than through Court proceedings. This is likely to be most relevant for non-use cancellation actions…
Intellectual property law is designed to confer exclusive protections to intangible assets, to be used in compliance with honest commercial practices. In the absence of a statutory definition of what constitutes bad faith, a body of case law has been necessary to illuminate the threshold of behavioural demerit sufficient to disqualify owners from the benefits…
EUTM 17981629 in the name of Pest Control Office Limited In May 2021, the Cancellation Division of the EUIPO declared the registration of Banksy’s Monkey image invalid on grounds of bad faith. The trademark owner appealed and on 25 October 2022, the Fifth Board annulled the decision and refused the cancellation action, ruling not…
https://www.top-fashion.sk/moda/made-in-czech-slovakia/5521-nehera-nekonvencna-moda-so-silnym-pribehom https://nehera.com/en Vintage marks – marks that only live on in people’s memories, but not on the market – face the challenge that trademarks that are not used can be cancelled. This conundrum has already been addressed in the earlier post on the CJEU Testarossa judgment. One such vintage mark that gave rise to a…
In two parallel decisions of 19 October 2022, the General Court confirmed the cancellation of the figurative “Lío” marks as shown above registered in the name of a German individual (let’s call him B) on grounds of bad faith (T‑466/21 and T‑467/21), confirming the EUIPO Fifth Board of Appeal on all points. The facts…
The long running dispute between Sky and SkyKick is not due to end any time soon. SkyKick has been granted permission to appeal the 2021 decision of the Court of Appeal to the Supreme Court. The Supreme Court’s findings are expected to provide important guidance for brand owners regarding whether broad scope trade mark specifications…
In its TARGET VENTURES decision of 28 October 2020 (T-273/19), the General Court stated that there could be bad faith when there were objective indicia of a dishonest intention of the trademark owner, not necessarily linked to causing damage to a third party, when it seeks to obtain an abusive exclusive right. The case is…
