Some (General Court) Decisions Put a SMILE on Your Face
2
False Advertising – Large Jury Verdicts in 2022 and the Likely Uptick in False Advertising Suits in 2023 – Part 1
3
If You Want It, You Should Have Done a Search On It: Why Trademark Searches are Essential Before Settling Down With a New Brand
4
The Battle of the Supermarkets Vol. 2 – GINgle Bells, GINgle Bells, GIN All the Way
5
Trademark Applications and Infringements in Germany: The Importance of Potential Revocation and Non-Use
6
The Battle of the Supermarkets – Evergreening of Trade Marks and Potential Bad Faith
7
Old Lady Shows Her Youth With Win in Significant Trade Mark Ruling Concerning NFTs
8
Dior Did Not SADDLE on Distinctive Character of Its Iconic Bag
9
Australian Government Commits to Protecting First Nations Visual Art
10
Who Really Owns Your Business’s Trade Mark? Federal Court of Australia Confirms That a Trade Mark Can Be Registered in The Name of a Company’s Sole Director and Shareholder
We are used to decisions about non-traditional trade marks not deserving protection in the European Union, leading to the inevitable conclusion that non-traditional trade marks can be difficult to register and keep on the register.
The recent McCain decision of the EU General Court seems to go into the opposite direction, providing some guidance on which proof of use will be sufficient for a non-traditional trade mark to stay on the EU register (see here).
Some of the largest false advertising jury verdicts were recorded in 2022. This, coupled with increased inflationary pressures will likely lead to an uptick in false advertising suits given that such pressures will impact consumer spending habits, leading to increased scrutiny of competitor advertising practices—particularly in the social media space.
Have you chosen a brand only to learn months later that the U.S. Patent and Trademark Office is refusing to register it due to someone else’s prior trademark registration or pending application? The USPTO’s most recent Q4 2022 data indicates that it takes 8 months or more for a trademark application to be reviewed—and ideally approved—by an examiner. Given that prolonged timeline, any issues with the application, such as a similar third-party mark that could prevent your own registration, may not surface until you or your company has already invested heavily in the mark.
This raises the question: what can be done for brands eager to launch but that want some measure of comfort that their trademark will be valid?
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.
Hamburg, Germany – Not only known for its famous seafood and the third largest European seaport for goods and cargo handling1, but also a considerable and noteworthy jurisdiction when it comes to the protection and enforcement of trade mark rights in preliminary proceedings.
The Higher Regional Court of Hamburg found in a recent trade mark dispute in preliminary injunction proceedings (Decision of 29 September 2022 – 5 U 91/21) between the “Deutsche Telekom” (“Claimant”) and the Spanish telecommunication company “Telefónica” and its German subsidiary (together “Defendants”), that the application and use of a “T” consisting of five dots in combination with various Telefónica company symbols (e.g. shown below left and middle) (“Contested Signs”) constitute an infringement of the well-known “T-brand” (shown below right) (EUTM 215194 ; DE 39529531) of Deutsche Telekom (“T-Trade Mark”).
Telefónica company symbol (Contested Sign (1))
Telefónica company symbol (Contested Sign (2))
Deutsche Telekom “T-Trade Mark”
The Court found that there was a likelihood of confusion between the opposing signs, confirmed that the “T”-brand has a reputation within the meaning of Art. 9 (2) lit. c) of the EU Trade Mark Regulation (Regulation (EU) 2017/1001), and therefore concluded that the defendant’s trade mark infringes the claimant’s trade mark rights resulting in the grant of a preliminary injunction (“PI”).
Two well-known grocery stores, Tesco and Lidl, are involved in an ongoing trade mark dispute (Lidl Great Britain Limited v Tesco Stores Limited[2022] EWHC 1434 (Ch)). While the trial is set to take place in 2023, the recent developments in relation to arguments of bad faith are noteworthy, especially for brands engaged in trade mark refiling, or ‘evergreening’.
Juventus FC (affectionately nicknamed the “Old Lady”) has won a noteworthy ruling in its case of trade mark infringement brought against the non-fungible token (“NFT“) producer Blockeras s.r.l (“Blockeras”). The Rome Court of First Instance, on 20 July 2022, ruled that the unauthorised minting, advertising and sale of NFTs1 can infringe the trade mark rights of the relevant owner.
Another unfavourable decision on non-traditional trade marks has landed, now in relation to Dior’s iconic Saddle bag. The EUIPO’s Second Board of Appeal decided that Dior’s Saddle bag is not distinctive with respect to handbags. The decision is seen as surprising yet not unpredictable, given the recent history of unsuccessful trade mark applications for 3D signs (for example, see our previous article on the Moon Boot case here).
“80% of the souvenirs sold in Australia purporting to represent First Nations cultures are in fact imitation products. These inauthentic items have no connection to First Nations peoples and are often cheaply made imports.”
