Category:Trademarks

1
Chanel Seeks Permanent Injunction Against WGACA
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A Lidl Decision With Big Implications–Court Of Appeal Edition
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Artistic Value May Prevent Protection of the Vespa Shape as a Trade Mark in Italy
4
Are You Eligible to Hold a .au Domain Name?
5
The Cloudy World of Look-a-Like Products – Aldi Successfully Defends Allegations of Trade Mark Infringement
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The Battle of the Bulls: NBA Fail to Invalidate Pizza Texas Bulls Trade Mark Similar to the Chicago Bulls Logo in the United Kingdom
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Aussie Burger Wars Continue: KFC v. HFC
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A Thorny Issue Resolved as “Flowers For All” Trade Mark Deemed Distinctive
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Burger Wars: The Big Beef Between McDonald’s and Hungry Jack’s–McD Asia Pacific LLC v. Hungry Jack’s Pty Ltd [2023] FCA 1412
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Genuine Use Of a Trade Mark In Relation To Second-hand Parts: The Ferrari TESTAROSSA Case

Chanel Seeks Permanent Injunction Against WGACA

The public legal dispute between luxury brand Chanel and luxury reseller What Goes Around Comes Around (“WGACA”) continues with Chanel seeking a permanent injunction that WGACA argues is too broad. As previously reported, a New York jury previously awarded Chanel a US$4 million verdict against WGACA for sales of counterfeit Chanel-branded products Chanel, Inc. v. What Goes Around Comes Around, LLC, et al., 1:18-cv-02253 (SDNY). 

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A Lidl Decision With Big Implications–Court Of Appeal Edition

The Court of Appeal of England and Wales upheld the previous judgment (see here) that Tesco Clubcard logos infringed Lidl’s trade marks and constituted passing off. Although it found that Tesco did not infringe Lidl’s copyright, it is time for Tesco to rebrand its Clubcard logo.

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Artistic Value May Prevent Protection of the Vespa Shape as a Trade Mark in Italy

The Italian Supreme Court recently issued a decision addressing whether the Vespa shape, already protected under copyright, was precluded from registration as a 3D mark. According to the Court, a shape’s artistic value usually confers substantial value which prohibits trade mark registration under Italian law.

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Are You Eligible to Hold a .au Domain Name?

In Australia, domain names under the .au namespace are subject to stringent eligibility and allocation rules. Importantly, non-Australian commercial entities are only eligible for registration for an Australian domain if they have applied for or hold an Australian trade mark registration with an exact match to the relevant domain name.

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The Cloudy World of Look-a-Like Products – Aldi Successfully Defends Allegations of Trade Mark Infringement

Recently the High Court of Justice of England and Wales handed down its judgment in a trade mark infringement proceeding between Aldi v Thatcher’s that had been being watched by many.

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The Battle of the Bulls: NBA Fail to Invalidate Pizza Texas Bulls Trade Mark Similar to the Chicago Bulls Logo in the United Kingdom

The National Basketball Association (NBA) has lost the appeal of its invalidation action against a United Kingdom (UK) trade mark filed by Pizza Texas Bulls Inc (Pizza Bulls) in classes 30, 39, and 43 in NBA Properties Inc. v. Pizza Texas Bulls Inc [2023] EWHC 3040 (Ch). Interestingly, the NBA was successful in the European Union (EU) in relation to identical marks under Opposition No B3146352, and prevented the Pizza Bulls mark being registered in the EU.

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Aussie Burger Wars Continue: KFC v. HFC

In KFC THC V Ltd v. Grill’d IP Pty Ltd [2023] ATMO 192, KFC THC V Ltd (KFC) brought an opposition against the registration of the trade mark “HFC” filed by Grill’d IP Pty Ltd (Grill’d). KFC is a global chain of fast food restaurants otherwise known as Kentucky Fried Chicken. Grill’d is an Australian chain of burger restaurants which markets its food as a healthier, fresher alternative to the major fast food chains. The trade mark “HFC,” standing for “Healthy Fried Chicken,” is used by Grill’d for the fried chicken options on its menu.

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A Thorny Issue Resolved as “Flowers For All” Trade Mark Deemed Distinctive

Business blooms for one trade mark owner as “FLOWERS FOR ALL” has been deemed distinctive enough to be registered as a trade mark in Australia.

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Burger Wars: The Big Beef Between McDonald’s and Hungry Jack’s–McD Asia Pacific LLC v. Hungry Jack’s Pty Ltd [2023] FCA 1412

In McD Asia Pacific LLC v. Hungry Jack’s Pty Ltd [2023] FCA 1412, fast-food giant McDonald’s and Australian dinner-time rival Hungry Jack’s faced off in the Federal Court of Australia over their burger names BIG MAC vs BIG JACK and MEGA MAC vs MEGA JACK.

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Genuine Use Of a Trade Mark In Relation To Second-hand Parts: The Ferrari TESTAROSSA Case

In a recent decision, the EUIPO Board of Appeal provided further guidance on what constitutes genuine use of a trade mark in relation to sales of replacement parts in the EU. The Board of Appeal held that genuine use cannot be established if the proprietor of the mark is not actively involved in the sale of the second-hand goods or their spare parts. The decision follows the 2020 CJEU decision in the Ferrari Spa v Du case, where the CJEU held that use of a trade mark amounts to genuine use if the trade mark holder sells second-hand goods directly. 

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