Since 1 April 2020 most cancellation actions in France have become administrative proceedings and must be filed with the French trade mark office (“Institut National de la Propriété Industrielle”). Only invalidity actions based on earlier copyrights, designs, surnames, pseudonyms etc. remain judicial proceedings. These new administrative proceedings are the result of the implementation of Directive EU 2015/2426…
While it is appropriate for a district court to adopt the findings of fact of a magistrate judge’s report and recommendations when deciding a motion for a preliminary injunction, it cannot do so when deciding a motion for summary judgment. A district court’s summary judgment order ruling that a vacation tour company violated the Anti-Cybersquatting…
In our previous post, we discussed the issue of terms that are descriptive in English but still lead to likelihood of confusion on an EU level, given the General Court’s belief that ” …if the word is not part of the mother tongue of a territory such understanding cannot be presumed unless a sufficient knowledge by…
On 2 July 2020, the Court of Justice of the European Union (“CJEU”) handed down another decision which interprets the mercurial concept of ‘trade mark use’. Case C-684/19 – mk advokaten is a preliminary reference concerning unauthorised use of a sign in an online advertising context. The Court reaffirmed Daimler (C‑179/1- Daimler AG) in that…
Yesterday, 2 July 2020, the European Commission announced that it will refer Romania to the CJEU for not implementing the Trade Mark Directive (Directive (EU) 2015/2436) – see here. While the deadline to transpose the Trade Mark Directive is long overdue – 14 January 2019, Romania is yet to proceed with this, making it the…
Parties and Mark The defendant is an Amazon entity. It is responsible for Amazon’s keyword advertising on Google Ads (formerly Adwords). The plaintiff is the exclusive licensee of the trademark BOSS in the perfume and cosmetics segment. One of the perfumes marketed by the plaintiff is “BOSS The Scent”. It ranks among the most successful…
Should a registered EU trademark which consists of a descriptive term (in one of the EU languages) be capable to prevent registration of a later EUTM which is fanciful but happens to contain the same letter string, solely because in some EU countries knowledge of that language cannot be adequately proven? What if that language…
The preliminary injunction was vacated, however, with respect to products the licensee held in inventory and that the mark owner did not seek to repurchase under the parties’ license agreement. A former licensee’s continued use of various marks for science toys after the license expired was likely to cause consumer confusion, the U.S. Court of…
On 20 May 2020, we received another decision in the long-running dispute between Merck KGgA (“Merck Global”) and their former US subsidiary (“Merck US”). This case dealt with the following five issues remitted by the Court of Appeal: Further consideration of partial revocation of Merck Global’s registered marks; Whether the activities of Merck US constitute…
On 28 May 2020 the General Court rendered its most recent ruling regarding enhanced protection of trade marks with a reputation (T-677/18; available in French and Spanish). Two issues are of particular interest in this judgment. First, how to prove reputation, as well as distinctiveness, of a mark consisting of the shape of the product…
