Consumer & Retail – Page 9

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

Jun 20 2019

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.

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

Jun 19 2019

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.

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

Jun 11 2019

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.

Fashion Law Update

May 31 2019

“Improvise. Become more creative. Not because you have to, but because you want to. Evolution is the secret for the next step.” Karl Lagerfeld

Our Fashion team has prepared the latest edition of Fashion Law where we provide you with the latest updates on legal issues affecting the fashion industry.

This edition covers:
• An update on Modern Slavery legislation
• Copyright infringement
• The benefits of design protection in an IP strategy
• A look at illegal phoenix activity.

Click here to read Fashion Law online.

By Jonathan Feder, Savannah Hardingham, Anna Smith, Simon Casinader, Olivia Coburn, Bianca D’Angelo and Paris Taylor

Zara v Zara: The evolving world of “fashion”

May 13 2019

The recent decision in Inditex v EUIPO demonstrates the far reaching, evolving nature of fashion brands and the markets they can operate in and are expanding into.

In this case, Inditex (one of the world’s largest fashion retailers and owner of the fashion brand Zara) appealed the EUIPO’s decision to grant registration of the ‘Zara Tanzania Adventures’ mark in classes 39 (travel and tourism) and 43 (travel agency services). The appeal was based on the registration of its own ‘Zara’ mark in class 39. But how can a fashion brand object to a mark in the travel sector?

Iceland’s trade mark nothing but a puddle

Apr 24 2019

After a challenge by the Icelandic government, the global supermarket chain Iceland has had its European Union trade mark invalidated. This decision comes merely five years after finally obtaining registration after a lengthy (12 years) application process in which the mark was opposed by a number of Icelandic companies.

Webpage specimens not automatically use in commerce

Apr 12 2019

On April 10, 2019, the Federal Circuit issued a precedential opinion, at the request of the U.S. Patent and Trademark Office (USPTO), regarding submissions of webpages as specimens of use. In re Siny Corp is an important reminder to applicants and practitioners to carefully consider whether webpage specimens to be submitted to the USPTO actually comprise the offering of goods and/or services at the point of sale, or whether they are mere advertising.

Fashion & Food Industry Update: More Companies Adopting Blockchain Solutions

Apr 08 2019

While still an emerging technology, more companies are implementing blockchain technology to manage supply chains, track goods, prevent counterfeiting, increase security, and ensure traceability. In a recent survey of global leaders, by auditing and financial services company KPMG, 48% of respondents stated they believe it is highly likely that blockchain will change the way their companies do business over the next three years, and 41% stated their company intends to implement blockchain technology during the next three years.

Can the mere registration of company name infringe? In the case of BMW, yes!

Mar 12 2019

On 12 February 2019, car manufacturer (and globally recognised car brand) BMW was granted summary judgment in its claims for passing-off and trade mark infringement against BMW Telecommunications Ltd and Benjamin Michael Whitehouse (the sole director of BMW Telecommunications Ltd). The respondents were a consultancy business providing services for railway signaling and telecommunications.

Court confirms additional tools for trade mark owners to protect their brand where they operate a selective distribution system in the EU

Feb 14 2019

A recent decision by the Court of Milan found that a trade mark owner who had consented to products being sold in the European Economic Area (EEA), but only through authorised retailers, could make a claim for trade mark infringement where the product was sold by an unauthorised retailer. This case highlights the effectiveness of implementing a selective distribution system for product manufacturers looking for new ways to protect their brand.

Category:Consumer & Retail