On 30 April 2020, Advocate General Giovanni Pitruzzella (AG) delivered his opinion in the matter C809/18 P related to the conditions for application of Article 8(3) of Regulation 2017/1001 which provides a specific ground for refusal allowing owners of, in practice foreign, marks to oppose filings for EU trade marks made by their agent or…
The Austrian courts recently had the opportunity to provide some clarifications as to when a geographical indication, which is not protected as such under EU legislation, may be registered as a trademark, relying on the principles established more than 20 years ago in the “Chiemsee” preliminary rulings of the Court of Justice of the EU…
The UK High Court has laid out its ruling following CJEU’s decision on SkyKick. To recap, the CJEU ruled that overly broad specifications will not automatically render a registered mark invalid and that the lack of intention to use the mark at the time of its application will not necessarily result in bad faith. What…
Russian law provides an effective instrument for preventing and detecting import of counterfeit goods and parallel import – the Customs Register of Intellectual Property (“Customs IP Register”). The Customs IP Register is kept by the Russian Federal Customs Service (“Customs”). According to the official information, at the beginning of 2020 there are more than 3200…
Evidence supported the finding that marks owned by the operator of the San Diego Comic Convention were not generic, and litigation misconduct by the defendant supported a $3.9 million attorney fee award. In the long-running trademark dispute between the operator of the well-known San Diego Comic Convention and a competitor that ran a similarly named…
CJEU’s recent preliminary ruling in Gömböc Case C-237/19 highlights assessment criteria regarding the registrability of shapes of goods as trademarks. The shape of the Gömböc was refused trademark protection in Hungary because the sign allegedly consisted ‘exclusively of the shape of goods which is necessary to obtain a technical result’ (in respect of toys) and…
If a mark is revoked after never being used, may the trademark owner obtain compensation of the “damages” incurred before revocation took effect? This what the CJEU was asked to decide in case C 622/18 (“Cooper International Spirits”), decided on 26 March 2020, and while the decision might be technically correct, it does not really…
Expired utility patent described the advantages of product configuration trade dress for “a beveled scalloped upper edge of a metal fastener.” The federal district court in Chicago properly determined trade dress for the design of conveyer belt fasteners owned by Flexible Steel Lacing Company (Flexco) was invalid as functional and could not be asserted against…
Red Bull GmbH v Big Horn UK Limited & Ors [2020] EWHC 124 (Ch) This case is an interesting commentary on the route that rights holders can pursue in order to challenge lookalike products. Historically, proprietors of well-known brands, particularity in the FMCG market, have found it difficult to succeed in an Article 9(2)(b) claim…
There is no per se rule providing that dismissal without prejudice of claims involving a fee-shifting statute such as the Lanham Act necessarily causes a defendant to suffer legal prejudice from being denied an opportunity to seek attorney fees. Defendants in case brought by a pet toy maker did not suffer legal harm by the…
