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…
The Brexit transition period has come and gone, and we are now almost 8 months into our post-EU life. One thing we can all agree on is that the way we work and the processes we use have been hit fairly hard. It will come as no surprise that the governmental bodies dealing with the…
As you may recall, the CJEU in cases C-449/18P and C-474/18P of 17 September 2020, (see https://trademarkblog.kluweriplaw.com/2020/09/23/lionel-messi-scores-his-surname-trade-mark-the-cjeus-own-goal/) held that consumers recognized MESSI as the surname of the soccer player Lionel Messi, and considered this fact a matter of common knowledge because any reasonably observant and circumspect consumer was thought to regularly read in the newspapers…
In its TARGET VENTURES decision of 28 October 2020 (T-273/19), the General Court stated that there could be bad faith when there were objective indicia of a dishonest intention of the trademark owner, not necessarily linked to causing damage to a third party, when it seeks to obtain an abusive exclusive right. The case is…
In granting summary judgment, the district court incorrectly assumed that “actual use” of unregistered service mark requires actual sales and revenue generation. A federal district court applied an incorrect legal standard for “actual use” by plaintiff Erik M. Underwood of his unregistered service mark E.R.I.C.A., the Tenth Circuit U.S. Court of Appeals in Denver has…
In a recent case, the German Federal Patent Court had to deal with an interesting phenomenon among word marks called “disemvoweling”, a wordplay whereby the vowels of a word or text are removed (German Federal Patent Court, Dec. of Feb. 1, 2021 – 26 W (pat) 576/18). In this context, the word mark “Cndy Brz”…
Last year, the European Court of Justice (ECJ) took a decision clarifying the effects of the “Praktiker” decision on trademarks registered for “retail services” without further specifications in class 35 before the date of that judgement’s delivery in 2005. Regarding the background of the case, the German company Burlington Fashion GmbH, well-known for their argyle…
On 18 May 2021, the Polish Supreme Court issued a much awaited ruling to resolve doubts concerning the national limitation period of non-pecuniary claims in trademark matters. The resolution was adopted in the context of an infringement case of the frontline EU trade mark (EUTM) owned by Audi AG (see below). The Supreme Court’s resolution…
The assessment of likelihood of confusion among descriptive marks often causes puzzling decisions, especially when the analysis focuses on whether consumers understand the descriptive character of certain terms, and when different consequences are attached to whether or not such understanding (or lack thereof) matters at all. The General Court (GC) on 28 April 2021…
Summary Tefal applied to register “a plain red dot affixed centrally to the bottom of a cooking receptacle (such as a pan, saucepan)” (below). The goods covered were “frying pans, saucepans, casseroles, stew-pans, cooking pots, crepe pans, grills, woks” in Class 21. The UK IPO refused the application because Tefal had not shown that…
