The body of law drawn from the precedents set by earlier decisions.
On 25 July 2018 (C-129/17), the CJEU decided that de-branding and rebranding of goods prior to any trade within the EEA without the trademark proprietor’s consent constituted ‘use in the course of trade’ of the originally affixed trademark and could, therefore, be prohibited by the proprietor of that mark. The judgment broadens the concept…
On the 21 March 2018 the Danish Board of Appeal (“The Board”) delivered its decision regarding the trademark protection of the shape of the following potato snack (decision no. AN 2017 00006): The snack originates from the famous snack brand Kims which is owned by Orkla Confectionary & Snack Danmark A/S (“Orkla”). In the decision…
Earlier this year, the Court of Appeal of Milan upheld a 2015 ruling by the Court of Milan which recognized copyright protection of the concept store of Kiko, the Italian make-up brand, and blocked competitor Wycon from using similar store decor in its shops. (Court of Appeal decision no. 1543/18, Kiko-Wycon, March 26, 2018). Kiko’s…
The U.S. Court of Appeals affirmed a Seattle district court’s dismissal of trademark infringement and false advertising claims filed against Amazon.com, Inc. by a seller on Amazon. The district court concluded that Amazon was not liable for promotional advertising emails that used the seller’s trademark because it did not imply a false association between Amazon…
In a trademark dispute over use of the brand name ROGUE for clothing, the federal district court in New York City erred by ruling on summary judgment that an apparel manufacturer was the rightful owner of the mark for clothing, and that an Oregon brewery was only entitled to sell clothing under the ROGUE Mark…
Despite recent U.S. Supreme Court cases holding that laches does not apply within the limitations periods for patent and copyright claims, laches is available as a defense to a cancellation claim during the five years following registration of a mark, while the mark is still “contestable,” a panel of the U.S. Court of Appeals for…
In Germany, the Higher Regional Court Düsseldorf decided that trademark rights were not exhausted in a case where luxury cosmetic products were offered at a German discounter. The Court held that the offer of the luxury cosmetic products at the discounter stores as well as at the discounter’s online-shop would be detrimental for the image…
Puma´s earlier mark Applicant´s mark By judgment of 28 June 2018 (C‑564/16 P), the CJEU rejected an appeal filed by the EUIPO. The case was, in essence, about whether and to which extent the EUIPO could or even had to take into account its own previous decision practice, including findings of fact…
A federal district court’s award of attorney fees under the Lanham Act and Utah’s Truth in Advertising Act (UTIAA) to a defendant following the parties’ stipulation of dismissal has been vacated and the case remanded by the U.S. Court of Appeals in Denver. The defendant was not a prevailing party entitled to attorney fees under…
Substantial evidence supported the Trademark Trial and Appeal Board’s finding that the mark “AQUAPEL” and design for leather and imitation leather hides, furniture covers, and various home goods was confusingly similar to the mark “AQUAPEL,” registered in standard characters, for different types of home goods, the U.S. Court of Appeals for the Federal Circuit has…
