Case law, CJEU, European Union, Infringement

(PhD Candidate, University College London)/ /Leave a comment

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…

EU Trademark reform, EUTM, National law, Romania, Trademark

(BomhardIP)/ /Leave a comment

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…

Exhaustion of rights, Germany, Infringement

(Lubberger Lehment )/ /Leave a comment

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…

Trademark, Unitary character, Weak elements in trademarks

, (Bugnion S.p.A)/ /2 Comments

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…

Case law, United States

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

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…

Infringement, pharmaceutical trademarks, United Kingdom

, (Stobbs IP)/ /Leave a comment

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…

3D Trademark, Article 8(5) EUTMR, Case law, General Court, Reputation, Unfair advantage

(University of Warsaw)/ /1 Comment

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…

Case law, United States

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

The business owner’s purported plans to expand to the United States market were vague and conclusory, and his filing of a U.S. trademark application had little bearing on his ability to expand his business to the United States. A Manhattan federal district court did not err in dismissing a Thai resident’s declaratory judgment action seeking…

Case law, CJEU, Finland, Infringement

(Osborne Clarke, University of Wrocław)/ /Leave a comment

On 30 April 2020 (C-772/18), the Court of Justice of the European Union (“CJEU”) addressed a contentious issue in trademark enforcement. It discussed the definition of “use in the course of trade”, especially as opposed to storing or importing in counterfeit trade. The CJEU examined Article 5(1) and (3)(b), (c) of Directive 2008/95 at the…

Italy, Legislation

, (Bugnion S.p.A)/ /1 Comment

”Few ideas and confused”. This was a frequent comment from high school professors reviewing our test results which seems strangely apt to describe this latest attempt by the Italian Government to protect Italian companies and the so called “made in Italy”, using trade mark rights.    The Ministerial Decree of 10 January 2020 set the final…