Countries

Case law, cosmetic trademarks, Exhaustion of rights, Germany, Grey online sales, Infringement, Infringement action, Reputation, Trademark

(b/cl IP)/ /Leave a comment

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…

Domain name, Spain

(BomhardIP)/ /Leave a comment

Spain is obtaining the questionable reputation for protecting terms that are completely descriptive in other major languages as trademarks. MATRATZEN is one (in)famous example, DONUT is another. However, the term AFTERSUN, commonly applied to skin care to be used after sun bathing, has now been rescued from the trademark monopoly. Laboratorios Genesse (now: AC Marca…

Brexit, European Union, United Kingdom

(Stobbs IP) and (Potter Clarkson LLP)/ /Leave a comment

In a recent Notice to Stakeholders, the European Commission has highlighted a possible outcome for customs and enforcement, following the British exit from the EU. Whilst this is subject to transitional provisions and the withdrawal agreement at large, it serves to reiterate the cliff edge which may conceivably be presented to UK based brand owners…

Case law, United States

(Wolters Kluwer Legal & Regulatory US)/ /Leave a comment

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…

Denmark, Distinctive Character, Moral

(Zacco Advokatanpartsselskab)/ /1 Comment

The General Court (in Case T-1/17) was, as it found the sign (IR 5510921) (hereafter LA MAFIA SE SIENTA A LA MESA) (in English: ‘The mafia is seated at the table’) contrary to public policy within the meaning of Article 7(1)(f) EUTMR. The sign was applied for and registered for goods/services in Classes 25, 35,…

Case law, United States

(Wolters Kluwer Legal & Regulatory US)/ /Leave a comment

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…

Domain name, United Kingdom

, (Stobbs IP)/ /Leave a comment

In a recent decision (Cartier International AGand others (Respondents) v British Telecommunications Plc and another(Appellants) [2018] UKSC 28), the UK Supreme Court has ruled that brand owners must pay Internet Service Providers’ (ISPs) costs for implementing website blocking injunctions. This is a reversal of the previous Court of Appeal decision, and whilst these blocking orders…

Exhaustion of rights, Germany, Selective distribution system

(Lubberger Lehment )/ /Leave a comment

In a judgement of April 2018, the Regional Court of Hamburg has ruled on the use of original advertising material by non-authorized dealers and on how trademark law can bypass copyright law (308 O 231/16). The plaintiff manufactures saddle bags and other high quality cycling accessories. The defendant is an online retailer with numerous online…

Coexistence, Defences, National law, United Kingdom

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Student Union Lettings Limited v Essex Student Lets Limited [2018] EWHC 419 (IPEC)     The UK Intellectual Enterprise Court has ruled that Essex Student Lets Limited, a student accommodation letting company, has fallen foul of trade mark infringement and passing-off, courtesy of their use of the mark “SU LETS”.   Background   The Defendant in…

Case law, Confusion, EUTM, France, Trademark

(Gide Loyrette Nouel)/ /Leave a comment

Cour de Cassation, Chambre Commerciale, January 31, 2018, Appeal No. C 16-10.761 The French Supreme Court emphasizes that the reputation of the earlier mark is a relevant factor in the assessment of likelihood of confusion and gives it wider protection. In 2009, adidas initiated an infringement action in France relying on its famous three stripes…