The Court of Justice of the European Union, the highest Court within the EU.
In the EU, any third party in possession of genuine goods put on the market in the European Economic Area (EEA) by the trade mark owner or with the trade mark owner’s consent is free to resell those goods within the EEA. This is because the EU imposes a system of “regional exhaustion”, which means…
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…
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…
CJEU, 30 May 2018, C-85/16 P, C-86/16 P – Kenzo Tsujimoto v. EUIPO / Kenzo [KENZO ESTATE] The fame of the fashion brand KENZO is such that it can be held against the registration of KENZO ESTATE as an EUTM for wines and “western liquors” and for services that are or could be ancillary…
EU Design law denies protection to designs which are solely dictated by a product’s technical function (art. 8(1) CDR). But how to determine if a product’s appearance is solely defined by its technical function in order to deny protection to a design? German courts, for instance used to apply the “multiplicity of forms” test, where…
The Benelux trade mark system will undergo two important changes as per June 1, 2018. Appeals from decisions of the Benelux Office for Intellectual Property (BOIP) Until now appeals from decisions of the BOIP in opposition cases were brought before the courts of appeal of The Hague, Brussels or Luxembourg (with further appeals on questions…
On 6th December 2017, the ECJ issued its judgement in the matter Coty / Akzente. The judgement is essentially about three questions: 1) Does the luxurious nature of products or trademarks justify a selective distribution system or did the Pierre Fabre judgement of 2011 put an end to that justification? 2) Does a selective distribution…
With decision C-425/16 of October 19, 2017, the European Union Court of Justice (“CJEU”) pronounced on whether or not EU national courts can dismiss an infringement action without first ruling on a counterclaim for invalidity, and if the courts must wait until the decision on the counterclaim is final. The issue arose from a request of…
The Court of Justice of the European Union (CJEU) has denied the Tea Board’s (TB) appeal against the General Court’s (GC) decision to allow Delta Lingerie’s (DL) application for various ‘Darjeeling’ marks in classes 35 and 38. In 2010, DL applied to register four figurative EUTMs including the word ‘Darjeeling’ in classes 25, 35 and…
On September 21, 2017, the European Court of Justice (CJEU) issued another important decision on designs (joined cases C-361/15 and C-405/15). Among several other issues, possibly the most relevant concerned whether or not the product and the sector to which a design relates affect the assessment of its novelty and individual character. The case concerned…
