In a case of first impression, the Ninth Circuit ruled that the Madrid Protocol gave a European company priority of right in a trademark even without prior use in commerce. The Ninth Circuit agreed with the California district court that Bacardi’s use of BACARDI UNTAMEABLE for rum did not as a matter of law infringe…
The LEHMAN BROTHERS mark has been used continuously in the course of winding up the affairs of at least one Lehman Brothers affiliated company. In a case involving competing applications to register the mark LEHMAN BROTHERS, the U.S. Court of Appeals for the Federal Circuit has affirmed a decision by the Trademark Trial and Appeal…
The prince and his prince house – where he lived happily ever after The Swiss Federal Administrative Court, as the appeal authority in opposition proceedings, supported the decision of the FIIP and ruled that there was a likelihood of confusion between the younger trademark “Prinzenhaus” (engl. prince house) and the earlier trademark “Prinz” (engl. prince)…
On 21st December 2021, the General Court (GC), in case T-369/20, dealt with “likelihood of association” setting out a double test which seems to be at odds with the previous case law, notably the landmark Sabel case (C-251/95). The EUTM application “CEFA Certified European Financial Analyst” in classes 9 and 41 was opposed on the…
On 5 November 2021, the Danish Maritime and Commercial High Court (the Court) issued a ruling between Kejser Sausage ApS (‘Kejser Sausage’) and Keyser KBH ApS among others (‘Keyser’). The case concerned Kejser Sausage’s gourmet hot dog stand in Copenhagen, which used the trademark ‘Kejser Sausage’. Elsewhere in Copenhagen, Keyser used the name ‘Keyser Social’…
A decision of the German Federal Patent Court dated 13 September 2021 (Case 26 W (pat) 20/20) shows the sometimes thin line between likelihood of confusion and exploitation of the reputation when earlier reputed marks are involved. The mark MARBO RED was filed as German national mark in relation to liquids and flavors for electronic…
We surely cannot. With Messi (see cases C-449/18P and C-474/18P MESSI) and Miley Cyrus (case T‑368/20 MILEY CYRUS), we learnt that reputation or renown of (personal) names is a factor which should be taken in consideration when comparing marks and which may ultimately exclude confusion with an earlier similar mark. However, two recent cases seem…
On 14 July 2021 the General Court (The Court) issued a decision in a matter between Cole Haan LLC (Cole Haan) and the Danish clothing company Samsøe and Samsøe Holding A/S (Samsøe and Samsøe) in the case T-399/20. The Court found the trademark applied for by Cole Haan consisting of the letter ‘Ø’ from the…
Full disclosure of the identity of the restorer and the used nature of the product protects a seller of second-hand goods from liability for a trademark infringement claim. Hamilton International Ltd., a well-known pocket watch parts manufacturer, failed to prove the likelihood of consumer confusion in its suit alleging that Vortic LLC infringed its trademark…
The ”Pearl” decision by the Federal Supreme Court (BGH) may not be brand new (15 October 2020), but it is interesting in many respects. This post will deal with the similarity of goods. Facts The plaintiff owns an EUTM, registered in 2009, and a German registration, from 2003, for the word PEARL. Both are protected…
