With decision C-425/16 of October 19, 2017, the European Union Court of Justice (“CJEU”) pronounced on whether or not EU national courts can dismiss an infringement action without first ruling on a counterclaim for invalidity, and if the courts must wait until the decision on the counterclaim is final. The issue arose from a request of…
The Black Friday shopping storm 2017 will kick off soon. However, the Black Friday battle has already begun in Germany. The dispute circles around a German trade mark Black Friday, the owner of the trademark being based in Hong Kong, and its German licensee. In fact, all traces “lead to Vienna”, as media summarized the…
This is a follow up to the blog post of 4 September, regarding Oslo Municipality’s attempt to obtain trade mark protection for the body of works of art of Norwegian artist Gustav Vigeland. Previously, the EFTA Court concluded that a trade mark consisting of a work of art may contravene accepted principles of morality or…
This is the final part of the two-part blog on estoppel which will focus on relevant case law where estoppel is essential to the result of the case. You can read the first part of the blog which deals with the theory of estoppel here. As is evident from the case law below, the establishment…
In San Diego Comic Convention’s trademark infringement case against the operator of a Utah comic book convention involving the trademark COMIC-CON, two orders entered by the federal district court in San Diego— a suppression order prohibiting the Utah operator for commenting on the pending litigation over the Internet and on social media platforms and a…
The German Football Association (DFB) owns the international mark “Deutscher Fussball-Bund” (with device) with basic registration in Germany (see image below), claiming protection for a wide variety of merchandise. The registration was notified to the Swiss Federal Institute of Intellectual Property in April 2014. The Swiss Federal Institute of Intellectual Property refused to protect the…
The federal district court in Salt Lake City did not err in terminating Leland Sycamore’s rights under a trademark license agreement (TLA) that granted him the right to use the “Grandma Sycamore’s Home Maid Bread” and “Grandma Sycamore’s Home Maid Bread Design” trademarks (the Sycamore marks), or in the scope of a permanent injunction it…
The Court of Justice of the European Union (CJEU) has denied the Tea Board’s (TB) appeal against the General Court’s (GC) decision to allow Delta Lingerie’s (DL) application for various ‘Darjeeling’ marks in classes 35 and 38. In 2010, DL applied to register four figurative EUTMs including the word ‘Darjeeling’ in classes 25, 35 and…
The CJEU judgment of 11 October 2017 in the CACTUS matter (C-501/15 P) surprised twofold: first, the CJ held that EUTMs from before July 2005 that covered all class headings in class 35 automatically covered “retail services for any goods”, and then, it considered the use of the cactus device alone as genuine use of…
On September 21, 2017, the European Court of Justice (CJEU) issued another important decision on designs (joined cases C-361/15 and C-405/15). Among several other issues, possibly the most relevant concerned whether or not the product and the sector to which a design relates affect the assessment of its novelty and individual character. The case concerned…
