The Court of Justice of the European Union, the highest Court within the EU.
Amazon’s internal search engine has already been the subject of a decision by the High Court (England and Wales) made just over two years ago (2014, EWHC 181, ch). The claimant was the proprietor of the LUSH trademark, used (inter alia) for bath additives. After the trademark was entered as the search term, Amazon exclusively…
In September 2015 the German Bundesgerichtshof (BGH), Germany’s highest civil court, decided questions regarding the conversion of a Community Trademark into a national German trademark. The outcome was painful. The ruling greatly weakened the Community trademark system. The case was referred back to the appeal court (OLG Düsseldorf) which will hopefully refer the case to…
On March 3, the Swedish Court of Patent Appeals (‘PBR’) delivered a judgment on the effect of a reputed EUTM in a single member state. PBR held that even if the EUTM ‘SKY’ et al were extensively used and had proven reputation in the UK and Ireland, and therefore in the EU, no recognition of…
In a recent decision, the Court of Appeal of The Hague concluded that there is a confusing similarity between Lacoste’s device mark consisting of a picture of a crocodile, registered for (among other things) cosmetic products in class 3, and the word mark EAU CROCO for the same products. The case concerned an application by…
The dispute started with the termination of a license contract by which Együd Garage was entitled to use Daimler AG’s trade mark “Mercedes-Benz” and to describe itself as ‘felhatalmazott Mercedes Benz szerviz’ (‘authorised Mercedes-Benz dealer’) in its own online (www.telefonkonyv.hu) advertisements ordered from the Hungarian Phonebook Company (MTT). Despite the request of Együd Garage to…
The scope of protection conferred upon trade mark owners can often prove to be a controversial subject, particularly where the trade mark applied for has a decorative look and feel to it. Despite the EU trade mark system now being over 20-years-old, and case law well-established, it is an issue that shows no sign of…
The Alicante Appellate Court has confirmed that the use of lists comparing fragrances to well-known perfume brands is illegal. Comparison lists compare smell-alike perfumes with the respective high-priced original perfume brand. These lists are distributed among retailers to inform customers of the “equivalence” between their fragrances and the well-known brand. Lately, retailers have been using…
Whether use of a trade mark in just one Member State is sufficient or not to support the validity of a CTM is an issue practitioners and Courts have struggled with since the CTM system began. The issue was addressed by the CJEU in their decision in ONEL back in 2012. Yet MINT, one of the first UK IPO…
The CJEU had to decide whether “El Corte Inglés” was confusingly similar to “The English Cut”. It wasn’t – however it might just be similar enough for article 8(5) CTMR (dilution protection) to apply. In its judgment of December 10, 2015 (case C-603/14 P, “El Corte Inglés” v. “The English Cut”), the CJEU overruled the…
In his opinion of 17 December 2015 (Case C-163/15) concerning the trade mark ARKTIS, Advocate General Wathelet proposes that recordal of the license is not a necessary condition for the licensee to be able to bring an infringement action based on a CTM. According to Article 23(1) CTMR, the transfer, rights in rem and licenses…
