Bundesgerichtshof, Case law, descriptive, descriptive elements, Distinctiveness, Evidence, Germany, National law, Trademark

(Lubberger Lehment )/ /Leave a comment

With decision of 25th February 2019, the German Federal Patent Court (Bundespatentgericht) has ruled on the registrability of a celebrity name for inter alia publications in class 16. The Bundespatentgericht is the appeals court for decisions of the German Patent and Trademark Office (DPMA). Franziska van Almsick, one of the most successful swimmers of recent…

Case law, EUTM, Registrability, United States

(De Simone & Partners S.P.A.)/ /Leave a comment

By the end of June, the US Supreme Court will have ruled on the registrability of scandalous and immoral marks in Iancu (USPTO) v Brunetti (No. 18-302). The case raises the issue of whether, in light of free speech under the First Amendment, a ban on the trademark registration of “immoral” or “scandalous” marks should…

Trademark

(Cirio Law Firm)/ /Leave a comment

In a judgment of 27 February 2019, the Swedish Patent and Market Court of Appeal (PMÖD) stated that a registration of a trademark in black and white cannot in itself result in protection in relation to all colour combinations. This is a turnaround of the practice established in Sweden since the 1960’s. The PMÖD has, unlike the Patent and…

Bundesgerichtshof, CJEU, Germany, Infringement

(Löffel Abrar )/ /Leave a comment

As reported earlier by this blog, there is a discussion in Germany whether an infringer who has received an injunction has to actively recall the products. And the German recall-saga continues, as the Higher Regional Court (OLG) of Düsseldorf has just recently decided in an unfair competition matter that the obligation to cease and desist…

Denmark, descriptive, Lack of distinctiveness, Registrability

, (Gorrissen Federspiel)/ /Leave a comment

A trademark registration of a color per se is notoriously difficult to achieve, but what about the name of a color? In two recent decisions from the Danish Board of Appeal (BOA) regarding the registration of the words MAGENTA and CREAM respectively, the question regarding the descriptiveness of color designations was the main issue. In…

Case law, Infringement, United States

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Kroma Makeup EU, LLC, a trademark licensee, lacked standing to assert trademark infringement claims against the Kardashian sisters and a U.S. beauty product seller, according to the U.S. Court of Appeals in Atlanta. Following a suit filed by the owner of the KROMA mark against the Kardashians and a beauty product manufacturer for infringement, Kroma…

Argentina, Case law, Confusion, Damage claims, Infringement

(Marval O’Farrell & Mairal)/ /Leave a comment

On 26 September 2018, Division II of the Federal Court of Appeals of the City of Buenos Aires issued a decision in “Re adidas AG v. Juan Carlos Chillemi SRL seeking discontinuance of use and damages” (File No. 5423/2010) confirming the decision of the trial court. adidas owns trademark registrations for the “three-stripes” design in…

Preliminary ruling, Shape marks, Two dimensional

, (Bugnion S.p.A)/ /Leave a comment

The EUTMR No. 2015/2424, as well as the Directive No. 2015/2436, have introduced various changes to EU and national trademark laws but both failed to provide transitory rules determining what is the applicable law for trademarks registered before the entry into force of the new law. In case C-21/18, Textilis Ltd and Ozgur Keskin v…

Confusion, descriptive, descriptive elements, Distinctive Character, Distinctiveness, Germany, Lack of distinctiveness, Level of similarity of marks, National law, National marks, Opposition, Similarity of marks, Trademark, Weak elements in trademarks

(b/cl IP)/ /Leave a comment

The question of how far descriptive or non-distinctive trademarks which somehow managed to be registered may be enforced is of particular relevance in jurisdictions like Germany which acknowledge their incontestability ten years after registration. The more recent approach of the European Court of Justice (ECJ) was that it accepted likelihood of confusion also in a…