Archive: February 2017

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Importance of Renown and Proof Thereof
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Use of another company (business name) in Internet advertising – ruling of the Court of Appeal in Bialystok (Poland)

Importance of Renown and Proof Thereof

In a ruling on 1 September 2016, the EU General Court invalidated a ruling of the European Union Intellectual Property Office (EUIPO) Board of Appeal in a case begun by a submission for the registration of a trademark showing an animal from the cat family leaping. The applicant was the Italian company Gemma Group Srl with its registered office in Cesarola Ausa. An objection was lodged by Puma SE with its registered office in Herzogenaurach, Germany.

The applicant submitted the following graphic mark for registration:

for machines for processing wood, aluminum, and PCV.

The plaintiff based its argumentation on two earlier international trademarks:

Those marks were registered for numerous types of goods in general use, including bags, clothing, accessories, footwear, toys, and sports equipment.

In addition, Puma SE raised the argument of the renown of its marks in all EU member states and for all goods covered by the registration. The objection was based mainly on the renown of those marks. In accordance with Article 8 paragraph 5 of Regulation No. 207/2009, a trademark similar to an earlier renowned mark is not registered if the unjustified use of that mark would result in undue benefits being reaped, or would harm the distinctiveness or renown of the earlier mark.

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Use of another company (business name) in Internet advertising – ruling of the Court of Appeal in Bialystok (Poland)

In a ruling on 3 February 2017, the Court of Appeal in Białystok (Poland) considered an appeal by a defendant in a case concerning the right to combat unfair competition (case file I ACa 740/16). The dispute arose over the use by the defendant of the business name of the plaintiff when marketing services on the Internet.

The plaintiff’s business is debt recovery. Its activities involve acquiring debts from third parties or acting on behalf of creditors. The plaintiff became aware that the effectiveness of its activities was declining and believed the cause of this lay in the unlawful, in its opinion, activities of the defendant. The defendant conducts business involving consultancy services for debtors of banks and other institutions.

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