The body of law drawn from the precedents set by earlier decisions.
Obtaining the status of a well-known trademark in Russia enables a right holder to prohibit any third parties from the unauthorized use of similar marks for whatever goods and services without any time limitations and makes them free from payments of renewal fees. However, although a brand could be very popular among Russian customers and…
The German Federal Supreme Court today once more decided on cancellation claims against German trademark registrations for square-shaped packaging for chocolate products (Decision of 23 July 2020 in Cases I ZB 42/19 und I ZB 43/19). According to the Court’s press release, it confirmed a decision by the Federal Patent Court which rejected the…
Further to Estelle Derclaye’s Kluwer Blog Post, a copy of which can be found here, we take a look at the practical consequences for manufacturers of the recent request for a preliminary ruling from the Court of Justice of the European Union (“CJEU”) by the Belgian Company Court, within copyright infringement proceedings brought by SI…
While it is appropriate for a district court to adopt the findings of fact of a magistrate judge’s report and recommendations when deciding a motion for a preliminary injunction, it cannot do so when deciding a motion for summary judgment. A district court’s summary judgment order ruling that a vacation tour company violated the Anti-Cybersquatting…
On 2 July 2020, the Court of Justice of the European Union (“CJEU”) handed down another decision which interprets the mercurial concept of ‘trade mark use’. Case C-684/19 – mk advokaten is a preliminary reference concerning unauthorised use of a sign in an online advertising context. The Court reaffirmed Daimler (C‑179/1- Daimler AG) in that…
The preliminary injunction was vacated, however, with respect to products the licensee held in inventory and that the mark owner did not seek to repurchase under the parties’ license agreement. A former licensee’s continued use of various marks for science toys after the license expired was likely to cause consumer confusion, the U.S. Court of…
On 28 May 2020 the General Court rendered its most recent ruling regarding enhanced protection of trade marks with a reputation (T-677/18; available in French and Spanish). Two issues are of particular interest in this judgment. First, how to prove reputation, as well as distinctiveness, of a mark consisting of the shape of the product…
The business owner’s purported plans to expand to the United States market were vague and conclusory, and his filing of a U.S. trademark application had little bearing on his ability to expand his business to the United States. A Manhattan federal district court did not err in dismissing a Thai resident’s declaratory judgment action seeking…
On 30 April 2020 (C-772/18), the Court of Justice of the European Union (“CJEU”) addressed a contentious issue in trademark enforcement. It discussed the definition of “use in the course of trade”, especially as opposed to storing or importing in counterfeit trade. The CJEU examined Article 5(1) and (3)(b), (c) of Directive 2008/95 at the…
On 30 April 2020, Advocate General Giovanni Pitruzzella (AG) delivered his opinion in the matter C809/18 P related to the conditions for application of Article 8(3) of Regulation 2017/1001 which provides a specific ground for refusal allowing owners of, in practice foreign, marks to oppose filings for EU trade marks made by their agent or…
