National marks

National marks are trade mark registrations which have effect in one jurisdiction only and are registered at that country’s central trade marks registry.

Appeal, Case law, Company names, Domain name, Lack of distinctiveness, National law, National marks, similarity of goods and services, Switzerland, Trade name, Trademark

(MLL Meyerlustenberger Lachenal Froriep AG)/ /Leave a comment

The Federal Administrative Court partially overturned a decision of the Swiss Federal Institute of Intellectual Property (IGE) refusing protection for Apple’s word mark “iMessage” for telecommunication services in class 38.   The Administrative Court agreed with the IPO that “iMessage” lacked original distinctiveness for messaging services, because such services were closely linked to the internet,…

European Union, Infringement action, National law, National marks, Sweden, Trademark

(Cirio Law Firm)/ /Leave a comment

On 17 May 2017, the Swedish Patent and Market Court (the “PMD”) decided a case whereby it held that Nestlé’s expansion of its cat food brand “PURINA felix” into Sweden infringed the reputed Swedish foodstuff trademark FELIX, and that the fact that PURINA felix was previously used and enjoyed recognition in another EU country did not…

Company names, Domain name, EUTM, Genuine use, Level of similarity of marks, Names, National marks, Opposition, The Netherlands, Trademark

(NLO Shieldmark)/ /Leave a comment

In a decision of a Dutch District Court earlier this year[1], the American fast-food chain Wendy’s suffered a loss against a local Dutch snack restaurant, which bears the name WENDY’S. The trademark registration owned by the same snack restaurant blocks the American chain to enter the market. Although this case has similarities with the story…

CJEU, EU Trademark reform, Germany, Infringement, Infringement action, National marks, Trademark

(Hildebrandt.)/ /Leave a comment

Two months ago I reported about the Draft of a new Trademark Act (Markenrechtsmodernisierungsgesetz) which was supposed to enter into force before the election for the next German Bundestag. Some of the relevant German associations commented in detail on the draft and proposed some well-grounded changes – i.e. the Markenverband, the GRUR, and the Bundesverband Deutscher…

Austria, Coexistence, EU Trademark reform, Genuine use, National marks

(schmid-ip)/ /Leave a comment

When doing clearing searches for new trademarks, companies often find themselves facing one or several old trademark registrations that are subject to the use requirement and apparently not in use. Thus, they may consider bringing a cancellation action for non-use against the trademark(s) in question. Companies are sometimes hesitant to bring such actions because they…

Figurative mark, National marks, Sweden

(Cirio Law Firm)/ /Leave a comment

On November 15, 2016, the Swedish Patent and Registration Office (“PRV”) rejected an application for trademark protection of the a figurative mark consisting of a hand giving the middle finger on the ground that it was contrary to accepted principles of morality in accordance to Chapter 2, Article 7 of the Swedish Trademark Act. The…

Appeal, Case law, EUTM, National marks, Spain, Supreme Court

(Garrigues)/ /Leave a comment

A recent Supreme Court judgement in the Dalí case shows clear respect for trademarks but raises some questions regarding image. A great many brands have used in their advertising campaigns the images of people who, despite no longer being alive, continue to have considerable selling power. There are even marketing studies which show that advertising…

Case law, Denmark, EUTM, National marks

(Gorrissen Federspiel) and (Zacco Advokatanpartsselskab)/ /Leave a comment

Royal Copenhagen, the Danish porcelain company, claimed infringement by Porsgrund AS (hereafter Porsgrund) as it considered the Norwegian porcelain dinner service company’s dinner service sets called ‘MaxiStrå blå’ to constitute a violation of Royal Copenhagen’s rights to the porcelain dinner service sets called ‘Blue Fluted Mega’. Royal Copenhagen claimed infringement under the Danish Trademark Act,…