The EU General Court has rejected a trade mark application which featured the word ‘Cannabis’ together with images of cannabis leaves as it was contrary to public policy.
Read MorePinnacle Runway Pty Ltd v Triangl Limited [2019] FCA 1662
In a recent decision commenced by Pinnacle Runway against well-known swimwear brand Triangl, the Federal Court has chastised the parties involved for partaking in so called “ill-advised proceedings”. The Court also confirmed that use of a word as a style name to differentiate between product lines will not amount to use as a trade mark so as to constitute trade mark infringement.
Read MoreTo the interest of many a scouser and football fan alike, Liverpool Football Club’s attempt to register as a UK trademark LIVERPOOL has been rejected by the UKIPO on the grounds that the word is of “geographical significance” to the city. Liverpool FC had filed its application in regards to various goods in relation to football and the filing had attracted significant public attention.
Other English football clubs (Everton, Chelsea and Tottenham) have managed to register several trade marks for each of their respective area names. In addition Southampton Football Club has managed to register SOUTHAMPTON as an EU trade mark. As a result, it is not surprising that Liverpool FC would seek to register a similar mark to help protect its valuable brand.
However, as a result of the filing the club received significant backlash from the people of Liverpool, including their own supporters, and – probably in a related move – Liverpool FC has said that it does not plan to appeal the refusal and it has withdrawn the application. An additional trade mark application for LIVERPOOL with different claims has also been withdrawn.
The matter presents a great case study for brand owners on balancing the need to protect their brand whilst being considerate of the potential adverse PR that will come with the application for certain trade marks.
Read MoreHasbro Inc. (Hasbro), owner of the well-loved board game Monopoly, suffered a defeat on 22 July 2019, before the EUIPO Board of Appeal in relation to the MONOPOLY trade mark. The EU registration for the MONOPOLY trade mark was partially invalidated as it was found that Hasbro had acted in bad faith when filing the application as part of a ‘trade mark re-filing’ programme.
Read MoreClaridge’s Hotel Limited (Claridge’s) recently succeeded in challenging in IPEC the use of the CLARIDGE name by Claridge Candles Limited (Claridge Candles) – a small one-person business.
However, the success came at with a cost for the world renowned hotel as in doing so it lost one trade mark registration entirely and had a second mark reduced in scope due to a non-use counterclaim, highlighting one of the risks of instituting trade mark infringement action.
Read MoreIPEC has ruled over the recent dispute between Beauty Bay (claimant) and Benefit Cosmetics (defendant) which arose after Benefit sold a Christmas gift set contained in a globe shaped box displaying the words “Beauty and the Bay”. The gift set was part of a 13 product collection celebrating 50 years since the Summer of Love and the company’s San Francisco heritage which included products like “Glam Francisco”, “I Left my Heart in Tan Francisco” and “B.Right by the Bay”.
On June 24, 2019, the U.S. Supreme Court held in Iancu v. Brunetti that the Lanham Act’s prohibition on registration of “immoral” or “scandalous” trademarks violates the First Amendment. The holding was in favor of Respondent Erik Brunetti, who had been denied a trademark registration for “FUCT” in connection with various clothing items.
Read MoreOn 19 June 2019, the EU General decided a case about the validity of Adidas’ EU trade mark registration for three stripes. In the General Court’s decision (see here), the Court upheld the invalidity of the mark on the basis that: (i) the mark wasn’t used consistently and evidence of reversed/amended versions of the mark was inadmissible; and (ii) Adidas failed to show acquired distinctiveness across the EU, providing admissible evidence for only five EU Member States.
Read MoreThe Court of Justice of the European Union (CJEU) recently confirmed that when assessing the actual use of a mark and the scope of protection afforded by a trade mark, the defining factor is the way in which it is perceived, and it is irrelevant that it is classified as a figurative or a position mark. In the CJEU’s decision in ECLI:EU:C:2019:471, the CJEU rejected German shoemaker Deichmann’s appeal to have Spanish competitor Munich SL’s trade mark revoked. The case revolves around the registered mark below, depicting a solid line cross on the side of a dotted outline of a shoe.
Further to the adoption of the so-called Trademark Package at European level, comprised of Regulation no.2015/2424 (as codified by Regulation no.2017/1001 dated 14 June 2017) on EU Trademarks (the “Regulation”) and Directive no.2015/2436, harmonizing Member States’ trademark regime (the “Directive”), both dated 16 December 2015, France was due to update its internal regulatory framework.
The PACTE Act no. 2019-486, adopted on 22 May 2019, implemented the Trademark Package at long last. While the Regulation addressed EU aspects and is of direct enforcement within Member States, the Directive provided Member States with some leverage on the internal implementation.
These new aspects aim at simplifying the enforcement of intellectual property rights (“IPR”), for both trademarks and the patents, by creating administrative procedures, rather than having to introduce a judicial action before the courts.
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