Trademarks – Page 10 – IP Law Watch

Louis Vuitton playing chess or checkers? The CJEU annuls’ the invalidation of Louis Vuitton’s EU trade mark

Oct 22 2020

Louis Vuitton received a favorable decision from the EU General Court (“General Court”) in June 2020 which may assist brand owners seeking IP protection of their decorative patterns. The decision confirms the distinctive character an EU trade mark must possess in order to benefit from protection throughout the EU as well as highlighting how patterns may be protected through registration as a trade mark rather than under other forms of IP protection such as copyright or design protection. However, the decision also reaffirmed the EU’s strict approach to assessing the unitary character of EU trade marks, which potentially sets a high bar for applicants to clear.

Protecting Animated Logos – LA28 Ushers In A New Era

Oct 05 2020

The Los Angeles Organizing Committee for the 2028 Olympic & Paralympic Games (LA28) has recently unveiled the official LA28 emblem, which, for the first time, is an animated emblem consisting of multiple logos (shown below). “Built for the digital age”, LA28 has designed the emblem to “evolve over time, reflecting [Los Angeles’] spirit of limitless possibility”.

Sep 22 2020

Banksy’s trade mark for one of his most famous artistic designs has been declared invalid by the European Union Intellectual Property Office (the “EUIPO”) on the grounds that it was filed in bad faith. The EUIPO finding him having engaged in “inconsistent with honest practices” in his attempt to protect his trade mark. A full copy of the decision can be found here.

The EUIPO said Banksy was attempting to use trade mark law to protect his artwork from being used commercially by third-parties because he couldn’t copyright it and maintain his anonymity. This decision highlights that the court will take a dim view of anyone – even famous artists – attempting to find a loophole in the law.

Reputation and likelihood of confusion – it’s all a bit of a Messi…

Sep 21 2020

CJEU determines no likelihood of confusion between footballer’s “Messi” figurative mark and earlier MASSI mark.

Whilst debate will continue to rage as to whether Messi or Ronaldo is the world’s best male football player, the Court of Justice of the European Union (the “CJEU”) has ruled that Argentine superstar can register his name as a trade mark after an almost decade long legal battle.

In an interesting decision for trade mark fanatics, irrespective of their interest in football, the CJEU stated that Lionel Messi’s reputation could be taken into account, without any evidence of said reputation being provided, when weighing up whether the public would be able to determine the uniqueness of Messi’s mark.

A Right Royal Rejection: “Royal Butler” Trade Mark Application Denied in the UK

Sep 15 2020

HRH Prince Charles’ former butler has had his application to register a “Royal Butler” logo as a UK trade mark denied by the UK Intellectual Property Office following a successful opposition by Lord Chamberlain, on behalf of Her Majesty the Queen. A full copy of the decision can be found here.

Following the recent media coverage regarding the various brand names used and trade marks filed by the Duke and Duchess of Sussex, known to many as “Harry & Meghan”, this decision is a timely reminder that UK trade mark law restricts the registration of names, brands and logos which may mistakenly suggest Royal patronage.

Are Valentino’s Rockstud® Shoes as Distinctive as the Red Soles?

Aug 18 2020

Has Valentino stepped up enough to show that their Rockstud® design has acquired distinctiveness similar to Christian Louboutin’s red soles? In a recent response to a USPTO office action, Valentino asserted similar notoriety in its Rockstud® design as Louboutin’s red soles.

U.S. Supreme Court Allows Booking.com to Trademark Its Domain Name

Jun 30 2020

On June 30, 2020, the U.S. Supreme Court held in U.S. Patent and Trademark Office v. Booking.com B.V., 591 U.S. ___ (2020) that “Booking.com” is eligible for trademark registration because consumers do not perceive “Booking.com” as a generic name.[1] The 8-1 decision written by Justice Ginsburg rejected the U.S. Patent and Trademark Office’s argument that when a generic term is combined with a generic Internet-domain-name suffix like “.com,” the resulting combination is necessarily generic, noting that such an unyielding legal rule that entirely disregards consumer perception is incompatible with the Lanham Act.

Jun 02 2020

In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd [2020] FCA 193

Sydney burger chain Down N’ Out is looking to appeal Federal Court Justice Anna Katzmann’s ruling in a case brought by American fast food giant In-N-Out Burgers, Inc. (In-N-Out). In her decision handed down earlier this year, Justice Katzmann found that Down N’ Out infringed In-N-Out’s registered trade marks and engaged in misleading and deceptive conduct and passing off. At a hearing last week, her Honour made declarations regarding Down N’ Out’s infringing conduct and granted Down N’ Out leave to appeal the orders. The determination of compensation will take place after any appeal.

What is the Italian historical trade mark?

May 11 2020

We increasingly hear about “brand value” along with figures and suggested strategies to assist brands in difficult times.

In Italy new provisions have been approved to recognise the value of the so called historical trade marks (ie. marchio storico). To be clear, these provisions are not related to COVID-19 economic measures aiming to boost the Italian economy. They have been in the agenda for quite some time with the aim of promoting the Made in Italy and increase the value of Italian brands abroad. However, they can be considered as additional measures available to companies in such challenging times.

“I wanna really really really wanna… take you to court.” VB trade mark dispute heads to the Federal Circuit Court in Australia

May 04 2020

Fashion mogul and former Spice Girl, Victoria Beckham has lost the first round of a trade mark battle with Australian skincare brand, VB Skinlab, in relation to two of VB Skinlab’s pending Australian trade mark applications for the “VB” brand filed in March 2018. A full copy of the decision can be found here.

Category:Trademarks