The body of law drawn from the precedents set by earlier decisions.
On 15 July 2016 the PI judge in the District Court in The Hague, the Netherlands, rendered a decision in a banana case between competitors Chiquita and Fyffes International about a recently introduced new brand of Chiquita. The decision confirmed that descriptive elements cannot automatically be disregarded if these elements form a conceptual whole with…
In a trademark infringement suit between two packing companies over rights in the name “PAKSTER,” the federal district court in Waterloo, Iowa, lacked jurisdiction to cancel two federal trademark registrations fraudulently obtained by defendant PI, Inc., because its rival, East Iowa Plastics, Inc., (“EIP”) failed to established that it suffered any damages as a result…
The federal district court in Sacramento properly determined that an individual (Scott R. Smith) lacked standing to challenge two Trademark Trial and Appeal Board decisions dismissing Smith’s petitions to cancel trademark registrations owned by Entrepreneur Media, Inc. (“EMI”), the U.S. Court of Appeals in San Francisco has decided in a nonprecedential summary ruling (Smith v….
A recent decision of the Federal Patent Court in Germany (Decision of 1 March 2016 on Case 29 W (pat) 33/13) shows that the unitary character of an EU trademark (EUTM) does not necessarily mean that it enjoys the same level of protection in all EU member states. In opposition proceedings in Germany, the Federal…
Company A has rights to the tradename “IST” since 2003, and an Austrian trademark “iST” (fig), with a priority of 2011. Company B also has rights to the trade name “IST”, since 2009. Can Company A successfully defend its trademark against a cancellation action of Company B, based on the (prior) tradename? The Austrian Courts say…
A recent decision of the Danish Trademark and Patent Office (hereafter DKPTO) shows the narrow scope of protection of company names under Danish law. It is possible to base an opposition before EUIPO on Article 8 (4) EUTMR which include 1) non-registered trademarks and 2) other signs used in the course of trade. Other signs…
The Higher District Court of Düsseldorf had to decide whether the parallel importer of medical devices also had to provide the trademark owner at its request with a specimen of the re-labelled product. In its detailed decision of 12 April 2016 on case I-20 U 48/15 the court held that medical devices were rather more…
Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 455 On 25 May 2016, the Court of Appeal held that the series mark provision in the UK Trade Mark Act is compatible with EU law. In March the decision in the trade mark conflict between Comic Enterprises and Twentieth Century Fox was…
From September 1, 2016 a specialised IP court will start to operate in Sweden as the current Swedish judicial system involving IP cases will undergo certain changes. The new IP court, named the Patent and Market Court, will handle most cases relating to intellectual property, marketing and competition in Sweden. Focusing on trademarks and brand…
In cancellation proceedings the German Federal Patent Court denied registrability to a 3-D-mark depicting a chocolate stick for chocolate products largely based on evidence it had collected on its own motion (Decision of 22 April 2016 on Case 25 W(pat) 8/09). The International Registration (“IR”) depicted below was registered in December 2005 in Germany. In…
