The General Court (in Case T-1/17) was, as it found the sign (IR 5510921) (hereafter LA MAFIA SE SIENTA A LA MESA) (in English: ‘The mafia is seated at the table’) contrary to public policy within the meaning of Article 7(1)(f) EUTMR. The sign was applied for and registered for goods/services in Classes 25, 35,…
Substantial evidence supported the Trademark Trial and Appeal Board’s finding that the mark “AQUAPEL” and design for leather and imitation leather hides, furniture covers, and various home goods was confusingly similar to the mark “AQUAPEL,” registered in standard characters, for different types of home goods, the U.S. Court of Appeals for the Federal Circuit has…
In a recent decision (Cartier International AGand others (Respondents) v British Telecommunications Plc and another(Appellants) [2018] UKSC 28), the UK Supreme Court has ruled that brand owners must pay Internet Service Providers’ (ISPs) costs for implementing website blocking injunctions. This is a reversal of the previous Court of Appeal decision, and whilst these blocking orders…
The wordings of Article 7(1)(f) EUTMR (for ease of reference: ‘trade marks which is contry to public policy or to accepted principles of moral’) and the Danish equivalent – Section 14(1)(1) of the Danish Consolidate Trade Marks Act – are very broad and allow much room for interpretation. A judicious application of this provision necessarily…
The Fourth Board of Appeal (BoA) of the EUIPO has once again been told off by the General Court (GC). In its decision of 6 June 2018 (case T-803/16), the GC decided that the BoA was not competent to rule upon the question of genuine use of its own motion in inter partes proceedings if…
The General Court annulled a decision by the Second Board of Appeal of EUIPO, based on an insufficient (or, rather, inexistent) assessment of the reputation claimed by the opponent (GC, 1 June 2018, T‑900/16, only available in Spanish and French). The case concerned largely identical marks– DAYADAY in slightly different stylization – on both sides…
CJEU, 30 May 2018, C-85/16 P, C-86/16 P – Kenzo Tsujimoto v. EUIPO / Kenzo [KENZO ESTATE] The fame of the fashion brand KENZO is such that it can be held against the registration of KENZO ESTATE as an EUTM for wines and “western liquors” and for services that are or could be ancillary…
In a judgement of April 2018, the Regional Court of Hamburg has ruled on the use of original advertising material by non-authorized dealers and on how trademark law can bypass copyright law (308 O 231/16). The plaintiff manufactures saddle bags and other high quality cycling accessories. The defendant is an online retailer with numerous online…
Student Union Lettings Limited v Essex Student Lets Limited [2018] EWHC 419 (IPEC) The UK Intellectual Enterprise Court has ruled that Essex Student Lets Limited, a student accommodation letting company, has fallen foul of trade mark infringement and passing-off, courtesy of their use of the mark “SU LETS”. Background The Defendant in…
Cour de Cassation, Chambre Commerciale, January 31, 2018, Appeal No. C 16-10.761 The French Supreme Court emphasizes that the reputation of the earlier mark is a relevant factor in the assessment of likelihood of confusion and gives it wider protection. In 2009, adidas initiated an infringement action in France relying on its famous three stripes…
