3D Trademark, Brand Protection, Distinctive Character, Distinctiveness, Registrability, Shape marks, Switzerland

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

The Swiss Federal Tribunal has ruled that the shape of the Nespresso capsules is technically necessary and that Nestlé’s 3D trademark shall therefore be cancelled (decision 4A_61/2021 of 7 September 2021). The decision of the Swiss Federal Tribunal is a milestone in the trademark infringement proceedings initiated by Nestlé against Ethical Coffee Company (“ECC”), which…

3D Trademark, General Court, Trademark, United Kingdom

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Guerlain, the luxury French perfume, cosmetics and skincare house, has emerged victorious in their three year-long attempt to obtain registration of a three-dimensional EU trade mark in respect of the shape of one of their lipsticks (the mark applied for shown below):     Application before the EUIPO and the Board of Appeal   The…

Case law, Likelihood of confusion, United States

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

The district court on remand failed to explain the reason’s for its summary judgment and order directing the PTO to register a rival restaurant’s mark. The U.S. Court of Appeals in New York City for a second time has vacated a Manhattan district court’s judgment ordering the USPTO to grant New York City restaurant operator…

Austria, EUTM, Names, revocation

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Under EU trademark law, a trademark may be revoked if it becomes a misleading indication as to the nature, quality or geographical origin of the goods or services it designates after the date on which it was registered, as a result of the use made of it by its proprietor or with its consent (Art….

Case law, Confusion, United States

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

Trial evidence supported the district court’s judgment, blocking registration of VAGISAN in the United States. The federal district court in Alexandria did not err in finding that a German company’s mark VAGISAN used on feminine care products was likely to cause confusion with Combe, Inc.’s VAGISIL brand used on identical and overlapping goods, the U.S….

Case law, Fees, Infringement, United States

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The district court’s attorney fee award was reasonable and did not violate First Amendment freedom of speech. In a trademark infringement case between two civic organizations that promote political candidates in Louisiana, the U.S. Court of Appeals for the Fifth Circuit affirmed a judgment by the district court awarding over $148,000 in attorney fees. In…

Trademark

, (Bereskin & Parr LLP)/ /1 Comment

It is a common occurrence in the lifetime of a brand for ownership to change. In some cases, multiple times as part of corporate restructuring or the sale of a brand. The cost and process for recordals can vary significantly in different countries. Generally, it is recommended that ownership be updated with local Trademark Offices….

Bundesgerichtshof, Case law, Color, Germany, Infringement action, Likelihood of confusion, Trademark

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According to the German Federal Supreme Court’s decision of 29 July 2021 (Case I ZR 139/20) the gold-colored foil of Lindt’s chocolate bunny is protected by a trademark acquired through use. The Court lifted the decision of the Higher District Court Munich which had rejected an infringement action against a competing product denying trademark protection…

Case law, Infringement, Likelihood of confusion, United States

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

The summary judgment finding by the district court which rejected an air mattress company’s theory of initial-interest confusion and the accompanying jury instruction that a likelihood of confusion must exist at the time of purchase to support a trademark infringement claim was erroneous. In a suit by bedding manufacturer Select Comfort against a competitor for…