Archive: June 2019

1
U.S. Supreme Court strikes down ban on “immoral” or “scandalous” trademark registrations
2
“Three stripes and you’re out!” – The EU General Court rules Adidas’ three stripe trade mark invalid
3
A figurative mark? A position mark? Or just a trade mark?
4
New versions of iconic designs – Can they be protected under EU design law?
5
SENSIS v SENSES – Federal Court makes findings of deceptive similarity
6
Bega claims the peanut butter throne in $60M war with Kraft Heinz

U.S. Supreme Court strikes down ban on “immoral” or “scandalous” trademark registrations

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.

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“Three stripes and you’re out!” – The EU General Court rules Adidas’ three stripe trade mark invalid

On 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.

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A figurative mark? A position mark? Or just a trade mark?

The 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.

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New versions of iconic designs – Can they be protected under EU design law?

We all have memories associated with iconic (car) designs. It could be our grandparents’ car, the car we used to drive when we were younger or that cool model we could not afford as students. Car designs often become icons and reflect socio-economic status and, for this reason, the automotive industry often offers remakes of classic models, such as the new Fiat 500, the new Mini and, of course, the new Porsche 911.

What happens to the design protection for iconic cars when they form part of a new released model? These are the issues that were tested by Porsche in two recent cases decided by the EU General Court (decisions T-209/18 and T-210/18). The key question from an IP perspective was whether a design incorporating a remake has the requisite novelty and individual character and, thus, should be deemed valid.

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SENSIS v SENSES – Federal Court makes findings of deceptive similarity

The Federal Court of Australia has found that the use of “SENSES DIRECT” was deceptively similar to an applicant’s earlier registered “SENSIS” trade marks. Sensis Pty Ltd v Senses Direct Mail and Fulfillment Pty Ltd [2019] FCA 719 concerned the Australian marketing and advertising business, Sensis (Applicant), who brought a claim for trade mark infringement against Senses Direct Mail and Fulfillment (Respondent), a direct mail services business. The Respondent cross-claimed on the grounds of non-use, arguing for the removal of SENSIS from the Trade Mark Register in relation to certain class 35 services.

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Bega claims the peanut butter throne in $60M war with Kraft Heinz

What you need to know

  • Under Australian law, an entity can’t transfer an unregistered trade mark to another entity without also transferring its entire business.
  • To transfer a trade mark without transferring a business, the transferor first needs to register its trade mark.
  • Failing to register a valuable trade mark used in a business can have major unforeseen consequences in the context of M&A transactions, especially where the business is operated by a subsidiary in a corporate group.
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