counterfeiting – IP Law Watch

“Lettuce Turnip the Beet” Pun on T-Shirts Not Trademark Use, Ninth Circuit Affirms

Jan 22 2021

The owner of the trademark “LETTUCE TURNIP THE BEET” cannot prevent third parties from printing the mere phrase on t-shirts, tote bags, or other products. The U.S. Court of Appeals for the Ninth Circuit affirmed on January 20, 2021 that consumers are likely to purchase such products because they find the phrase aesthetically pleasing and not because they associate the phrase with any particular source. LTTB LLC v. Redbubble, Inc., 19-16464 (9th Cir. 2021).

Show me the money: Supreme Court rules that trademark infringers may disgorge profits even if the law was not willfully violated

May 04 2020

The U.S. Supreme Court confirmed that brand owners are not required to prove willful intent before obtaining a defendant’s lost profits. On April 23, 2020, the Supreme Court resolved a longstanding circuit split and unanimously held that trademark infringers may have to hand over their profits even if they did not willfully infringe.

In Romag Fasteners, Inc. v. Fossil Group, Inc., the Supreme Court was tasked with determining whether the rule that a plaintiff can win a profit remedy only after showing a defendant willfully infringed its trademark can be reconciled with the statute’s plain language. Ultimately, the Supreme Court sided with the plaintiffs, Romag Fasteners (Romag), holding that:

“[a] plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award.”

Court of Milan Grants Copyright Protection to Après-ski Boots Moon Boots

Sep 15 2016

According to the Italian court, an industrial design can enjoy copyright protection if it has an artistic value

According to the Italian court, an industrial design can enjoy copyright protection if it has an artistic value

In July, the Court of Milan issued an interesting decision that granted copyright protection to the famous après-ski boots “Moon Boots” on the basis that they have recognized artistic value. In fact, the court recognized that Moon Boots have a particular aesthetic appeal capable of deeply changing the concept of après-ski boots, so that they have become an actual icon of Italian design.

In this case, the producer of the famous après-ski boots sued the producer and the distributor of a similar type of boots, called “Anouk Boots”. They alleged they constituted copyright infringement, infringement of the registered community design as well as unfair competition and asked for applicable remedies and compensation.

“Blank” blocking orders on “alias” targeted web sites cannot be issued

Sep 15 2016

According to the Court of Milan, such injunctions would be contrary to local procedural rules as well as to Italian and European fundamental principles of law

In July, a famous Italian broadcaster asked the Court of Milan to block access to a specific portal, in order to stop its unlawful communication to the public of football matches of major Italian teams and of the UEFA Champions League to which the broadcaster holds the exclusive broadcasting rights.

Can Trademarks Constituted by the Shape of a Product be Protected in the Jewelry Sector?

Jun 24 2016

Cartier Wins Over the Request of Interim Relief by an Italian Company

Recently, an order of the court of Venice raised the matter of the shape of the product intended as a ground for refusal to registration and invalidity of a trademark.

The case is also interesting because it relates to the luxury sector and involved a leading firm in the jewelry sector, Cartier. An Italian jewelry producer, Fope S.r.l., sued Cartier alleging trademark counterfeiting and unfair competition for having marketed a jewelry collection reproducing a particular element of its icon product. This iconic shape was previously registered as an Italian and European trademark. Cartier claimed the registered trademarks were invalid on the basis that they are composed by the shape giving a substantial value to the product and such circumstance represents a ground for refusal to registration by law.

Tag:counterfeiting