This post is the sequel to the post ‘Trademarks in Transactions – Part I: Due Diligence’ which dealt with trademark issues which regularly arise during the due diligence phase of an M&A transaction. Once the due diligence phase is over, and often already during the due diligence phase, the parties of an M&A transaction will…
On 28th February, the EU Commission published the Draft Withdrawal Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community (the “Draft”), as can be viewed here, with commentary here. In a week of weather warnings, plunging temperatures and de-icer fume…
On 17 January 2018, the French Supreme Court (Cour de cassation) held that affixing a prior trademark, without consent, to products exclusively intended for export to and lawful sale in China constitutes trademark infringement. The dispute involved the French wine company Castel Frères, owner of a number of French and European trademarks for alcoholic beverages and…
A Hungarian company distributed knives under the brands ‘BLAUMANN’ and ‘SWISS HUFEISEN’ in Germany and in other European countries including Hungary. The knives were manufactured in China and had no connection with Switzerland. On the handles of the knives, a cross with equal arms can be seen within a pentagonal shield with three curved sides…
In a decision of 17 January 2018 (HR-2018-110-A), the Norwegian Supreme Court concludes that trade mark protection covers instances where there is a clear possibility that damage to the functions of a trade mark may occur only after the products have been sold. This is the first decision after joining the EEA in which the…
The draft Brexit Withdrawal Agreement between the EU and the UK, which was published by the European Commission on 28 February 2018, provides for continued protection in the UK of registered or granted IP rights. According to article 50 (1) of the draft agreement, the holder of a EU trade mark, design or plant variety right,…
In yet another decision, the German Federal Supreme Court (BGH) has ruled on whether an injunction also obliged an infringer to take active steps to stop the distribution of infringing products through resellers (decision of the BGH of 11 October 2017 in Case I ZB 96/16). The case follows a series of earlier decisions by…
In Sky v Skykick [2018] EWHC 155 the High Court has asked the CJEU to answer key questions about the validity of UK and EUTM registrations. Sky alleged trade mark infringement of their UK and EUTMs by SkyKick. Skykick denied this and counter-argued that Sky’s registrations were wholly or partly invalid, on the basis that…
Fack Ju Göhte is the title of one of the most successful German comedy films in recent times. A EUTM application by Constantin Film Produktion GmbH for the wordmark “FACK JU GÖHTE”, mostly for merchandising products, was rejected by EUIPO for being “contrary to public policy or to accepted principles of morality”. On appeal, the…
Shape mark: form of a drinking bottle lacks distinctiveness in relation to perfumes A recent judgement of the Swiss Federal Administrative Court highlights the strict practice for the registration of shape marks. The court ruled that a 3D mark for perfumes cannot be entered in the trade mark register for perfumes in Class 3, since…
