Category: Consumer & Retail

1
Are Valentino’s Rockstud® Shoes as Distinctive as the Red Soles?
2
U.S. Supreme Court Allows Booking.com to Trademark Its Domain Name
3
Down N’ Out – Down on their luck
4
“I wanna really really really wanna… take you to court.” VB trade mark dispute heads to the Federal Circuit Court in Australia
5
Kraft v Bega: Australian appeal court decision reaffirms the perils of relying on unregistered trade mark rights
6
Who Owns an Athlete’s Tattoos? The Player? The Tattoo Artist? A Licensor?
7
Trademark infringement case update: Lucky Brands Dungarees v Marcel Fashion Group
8
More than financial – blockchain’s potential in the healthcare and life sciences industries
9
‘High’ expectations for Cannabis trade mark ‘hash’ed – Is EU trade mark law ready for Cannabis(TM)?
10
Ferrero successfully enforces the Tic Tac shape mark in Italy

U.S. Supreme Court Allows Booking.com to Trademark Its Domain Name

On June 30, 2020, the U.S. Supreme Court held in U.S. Patent and Trademark Office v. Booking.com B.V., 591 U.S. ___ (2020) that “Booking.com” is eligible for trademark registration because consumers do not perceive “Booking.com” as a generic name.[1] The 8-1 decision written by Justice Ginsburg rejected the U.S. Patent and Trademark Office’s argument that when a generic term is combined with a generic Internet-domain-name suffix like “.com,” the resulting combination is necessarily generic, noting that such an unyielding legal rule that entirely disregards consumer perception is incompatible with the Lanham Act.

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Down N’ Out – Down on their luck

In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd [2020] FCA 193

Sydney burger chain Down N’ Out is looking to appeal Federal Court Justice Anna Katzmann’s ruling in a case brought by American fast food giant In-N-Out Burgers, Inc. (In-N-Out). In her decision handed down earlier this year, Justice Katzmann found that Down N’ Out infringed In-N-Out’s registered trade marks and engaged in misleading and deceptive conduct and passing off. At a hearing last week, her Honour made declarations regarding Down N’ Out’s infringing conduct and granted Down N’ Out leave to appeal the orders. The determination of compensation will take place after any appeal.

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“I wanna really really really wanna… take you to court.” VB trade mark dispute heads to the Federal Circuit Court in Australia

Fashion mogul and former Spice Girl, Victoria Beckham has lost the first round of a trade mark battle with Australian skincare brand, VB Skinlab, in relation to two of VB Skinlab’s pending Australian trade mark applications for the “VB” brand filed in March 2018. A full copy of the decision can be found here.

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Kraft v Bega: Australian appeal court decision reaffirms the perils of relying on unregistered trade mark rights

In the case Kraft Foods Group Brands LLC v Bega Cheese Limited [2020] FCAFC 65, the Full Court of the Federal Court of Australia has dismissed Kraft’s appeal of a decision entitling Bega to exclusive use of the iconic yellow lid and yellow label with a blue or red peanut device on its peanut butter jars.

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Who Owns an Athlete’s Tattoos? The Player? The Tattoo Artist? A Licensor?

Who owns a celebrity’s tattoo, and the extent to which that tattoo can be displayed in a commercial context, raises right of publicity, copyright, and trademark issues. A district court in the recent Solid Oak case found no copyright infringement where a video game incorporated tattoos as inked on professional NBA players. Solid Oak Sketches, LLC v. 2K Games, Inc., No. 16-CV-724-LTS-SDA (S.D.N.Y. March 26, 2020).

This case considered use of tattoos as part of lifelike depictions of professional athletes in video games, however the ruling easily relates to individuals with tattoos who commodify their likeness such as celebrities, social media influencers, and musicians.

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Trademark infringement case update: Lucky Brands Dungarees v Marcel Fashion Group

A nearly 20-year dispute between two competitors in the apparel industry will be heard by the Supreme Court Monday January 13, 2020, on the legal issue of claim preclusion – highlighting the practical pitfalls of releasing trademark infringement claims in settlement agreement between parties that continue to use the marks at issue. The case is Lucky Brands Dungarees, Inc. v. Marcel Fashion Group, Inc., Case No. 18-1086.

The practical lessons to draw from this dispute are numerous:

  1. the importance of initially clearing marks and implementing a plan to handle potential third party objections
  2. strategic enforcement as to when, and against whom, to enforce trademark rights – and squarely on point with this nearly 20 year battle now before the Supreme Court
  3. careful drafting of what claims are released in the context of future use of the same or similar trademarks.
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More than financial – blockchain’s potential in the healthcare and life sciences industries

Blockchain technology is considered by many to be one of the most important technologies developed in recent years. It is often misunderstood and its potential has yet to be fully realised and harnessed. Blockchain has been the subject of a large amount of negative press due to volatile price fluctuations of its biggest user, the cryptocurrency, and this has generated a public mistrust.

However, blockchain could hold the answer to two of technology’s greatest challenges: data reliability and security. These two things are particularly important in the healthcare and life sciences sector where veracity of data is a life or death question and the safety of our most intimate data is paramount.

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‘High’ expectations for Cannabis trade mark ‘hash’ed – Is EU trade mark law ready for Cannabis(TM)?

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.

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Ferrero successfully enforces the Tic Tac shape mark in Italy

Many of us had a Tic Tac box in our pockets as kids, no matter the country we grew up in. Ferrero Spa (“Ferrero”), the Italian manufacturer of Tic Tac (and lots of other delicious confectionary products) registered the Tic Tac box as a trade mark in several jurisdictions, including Italy.

After succeeding before the CJEU in the invalidation action against BMB sp. z o.o. earlier this year (click here), in a recent case brought before the Italian courts, Ferrero successfully defended its shape marks, despite the invalidity claim brought by S.r.o. Mocca spol. (“Mocca”), a Czech company selling Bliki-branded mints in an identical container.

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