Litigation – Page 2 – IP Law Watch

Nothing more than Empty Words: The Difficulty with Registering Slogans as Trade Marks in the EU

Apr 25 2023

Companies continue to face difficulties in achieving EU trade mark protection for their slogans. In separate recent decisions of the EU General Court, two trade mark applications relating to advertising slogans were rejected on the grounds that the marks lacked the ‘distinctive character’ required to be registerable under Article 7(1)(b) of Regulation 2017/1001. These two decisions join a long list of case law rejecting similar applications.

High Court Smooths Out Wrinkles in Full Federal Court’s PROTOX Decision

Mar 20 2023

The High Court has clarified the test for trade mark infringement, with a unanimous rejection of Allergan Australia’s claims against Self Care IP Holdings Pty Ltd (Self Care) for the use of “PROTOX” branding on anti-wrinkle skin care products in Self Care IP Holdings Pty Ltd & Anor v Allergan Australia Pty Ltd & Anor [2023] HCA 8.

Self Care was successful on all matters on appeal, with the Court finding that Self Care did not use “instant Botox alternative” as a trade mark, “PROTOX” was not deceptively similar to “BOTOX”, and the phrase “instant BOTOX alternative” was not used in breach of the Australian Consumer Law (ACL).

CJEU Paves the way for Red-Soled Heels to Widen the Scope of Liability of E-Commerce Platforms

Mar 14 2023

A recent preliminary ruling by the Court of Justice of the European Union (“CJEU”) in the joint cases (C-148/21 and C-184/21) between a luxury fashion brand known for its signature red-soled heels Christian Louboutin and an e-commerce giant Amazon might mark a start of an era of increased accountability of marketplaces in relation to listings of third parties they accommodate on their platforms.

Dec 23 2022

It is beGINning to look a lot like a legal disputes saga between supermarkets in the UK. We have recently covered an ongoing dispute between Lidl and Tesco (see here), which relates to an alleged trade mark infringement. This time, Marks & Spencer (M&S) are suing the largest Europe’s discount grocery chain Aldi for copying their registered designs of the light-up Christmas gin bottles. This is the second legal case in recent times brought by M&S against Aldi, with the first one involving the famous Colin the Caterpillar cake, which has since been settled. Notably, the case at hand in relation to gin bottles demonstrates the benefits of registering designs in the UK, especially if such design is unique and has a significant value to the brand, and the brand would like to protect it against any copycats.

Mind the Gap: Patagonia Sues Gap For Copying Fleece Design

Nov 28 2022

High-end outdoor clothing brand Patagonia Inc is taking on fast fashion retailer Gap for copying its “iconic” fleece jacket design. Patagonia Inc has filed court proceedings in the Federal Court.

In a complaint filed on 22 November 2022, Patagonia alleges that Gap willfully and deliberately copied the fleece design through the creation and sale of its “Mockneck Pullover” jackets, mimicking the flap pocket and rectangular logo of Patagonia’s classic “Snap-T” fleece jackets (shown below).

Aug 31 2022

Cadbury has proven the adage that perseverance is the key to success as their continued and well-document pursuit over the registration of the colour purple has finally seen success in Société des Produits Nestlé S.A. v Cadbury UK Limited [2022] EWHC 1671 (Ch). The UK High Court has partially upheld the Cadbury appeal over UKIPO’s previous 2019 decision. Hopefully, this will bring clarity to businesses wishing to register colour marks instead of creating further ambiguity around the registrability requirements of colour marks and other non-traditional marks.

Swatch v Samsung: App Store Operators are Not Intermediaries and Can be Liable for Trade Mark Infringement

Aug 30 2022

The High Court of Justice of England & Wales has recently held Samsung liable for trade mark infringement for watch faces sold on the Samsung Galaxy App store (“Samsung’s Store”) and infringing Swatch Group’s trade mark rights. The judgement provides useful guidance on intermediary liability specifically regarding app store operators.

Lovely Jubbly? Fictional characters are capable of copyright protection in the UK

Jul 21 2022

Considering the UK’s rich history of literature, it may be somewhat surprising to know that there was very little case law discussing whether copyright might subsist in a fictional character. However, on 8 June 2022, the UK courts finally tackled whether a fictional character can be protected under copyright law in Shazam Productions Ltd v Only Fools The Dining Experience Ltd & Ors [2022] EWHC 1379 (IPEC).

Latvian Citizen Fined US$4.5 Million and Sentenced to More than 4 Years of Imprisonment for Fraudulent Trade Mark Renewal Scheme

Jul 04 2022

Misleading renewal notices to trademark owners continue to cause confusion and, in some cases, unnecessary fees paid to fraudulent schemers that do not result in renewal of a trademark registration. Recently, a Latvian citizen was sentenced to more than four years in U.S. prison and fined over US$4.5 million in restitution, after he pleaded guilty to a three-year scheme that defrauded thousands of U.S. trademark owners of over US$1.2 million.

Indirect Patent Infringement Down Under

Jun 07 2022

The issue of contributory infringement of a patent under the Australian Patents Act 1990 (Act) does not often arise for consideration by the Australian judicial system. When it does arise, the question of whether or not the product supplied is a ‘staple commercial product’ under the relevant provisions of the Act is always of particular interest.

In only a few cases has the impugned product been held to be a staple commercial product, and so any case that expands upon that product class is a particularly valuable aid. It is therefore of interest that the Full Court of the Australian Federal Court has recently considered contributory infringement in Hood v Down Under Enterprises International Pty Limited [2022] FCAFC 69.

Category:Litigation