The Düsseldorf first instance district court decided that the trademark of Ferrari has to be cancelled (Decision as of 2 August 2017 – Case no. 2a O 166/16 – juris). However, the decision in not yet final.
On 4 August 2009, the company Interton sp. z o.o. (“Interton”) applied for the word-figurative trademark “A ADORATION” – goods from class 3 (cosmetics, including eye shadow, lash mascara, lipstick, fluids, makeup foundation, nail polish). The Polish Patent Office granted a protection to the mark (R-235773). Fast forward to 21 June 2017 (and after a number of oppositions and disagreements), the Supreme Administrative Court provided a ruling dismissing the PPO’s decision.
In 2016 Zbyszko Bojanowicz sp. z o.o. S.K.A. applied to the EUIPO to have the word-figurative mark “I’m organic” registered for goods and services from classes 16, 32 and 42 of the Nice Classification.
The EUIPO found that, in this case, conditions under Article 7 par. 1 b) and c) of Regulation No. 207/2009 of 26 February 2009 on the Community trademark existed for which the submission of a word-figurative trademark must be rejected.
On 22 June 2017, Advocate General Maciej Szpunar presented an opinion in case C-163/16 concerning a trademark registered for the benefit of the well-known fashion designer Christian Louboutin, in the form of the colour red applied to the sole of a shoe.
In 2010, Louboutin obtained a registration of a Benelux trademark submitted for goods from class 25. This covered shoes (except for orthopaedic shoes), while in 2013, the registration was restricted to high-heeled shoes.
Local entrepreneurs are more and more often taking actions aimed at protecting their trademarks abroad.
The presence of products bearing local trademarks in foreign markets is becoming more and more common. The shaping of an international nature and increased recognition of trademarks usually starts from the development of a distribution network through obtaining new sales markets and concluding commercial contracts with foreign entities. While planning activity in other territories, it is advisable to ensure trademark protection in the selected jurisdictions. Trademark protection is based on the rule of territoriality. A global brand usually emerges when their trademarks are protected in a majority of countries worldwide. An applicant has three types of applications available:
i) domestic (before local trademark office),
ii) international (through the Madrid system) or
iii) regional (i.e., covering the entire European Union).
On 1 October 2017, the second part of the European trade mark reform entered into force, completing the implementation of Regulation (EU) 2015/2424 amending the Community trade mark regulation (EUTMR).
Taking a step back, this is in fact the last part of a much longer reform process that began about 10 years after the adoption of the EU trade mark system in 1996. In 2008, the European Commission published the Communication on an industrial property rights strategy for Europe with the intent to review the current practice and bring the European trade mark system to the next level. Subsequently, in depth studies, a public consultation and an impact assessment followed until the approval, in December 2015, of a new amending Regulation and a Directive to harmonise the laws of Member States.
IP Australia has released a consultation paper (Paper) concerning proposed amendments to Australia’s system for filing divisional trade mark applications. The Paper proposes amendments which will affect all divisional applications filed in Australia, including allowing divisional applications to be filed for International Registrations Designating Australia (IRDAs) for the first time.
In a positive decision for brand owners, the UK Supreme Court has confirmed that criminal trade mark offences can apply to the sale and distribution of grey market goods in addition to counterfeit goods.
In R v M & Ors [2017] UKSC 58, the appellants had been importing clothes and shoes into the EU that bore trade marks of famous fashion brands. These were a combination of counterfeit goods and grey market goods (i.e. goods that had been produced with the trade mark owner’s consent but that had been subsequently sold without their consent).
In newly issued court proceedings, the makers of Toblerone have become the latest confectionary manufacturers to seek to protect the shape of their product via 3D trade mark registrations. Following the recent difficulties Nestlé faced in registering the shape of their Kit-Kat bar, Mondelez have commenced proceedings against Poundland in relation to their newly announced Twin Peaks bar. Twin Peaks bears more than a passing resemblance to a Toblerone, except that each chunk of chocolate features two peaks rather than one.
It’s game, set, match for Adidas when it comes to the protectable trade dress in its iconic Stan Smith tennis shoe. In a dispute between Adidas and Skechers over the “Skecherizing” of the Stan Smith shoe, the District Court for the District of Oregon denied Skechers’ motion for summary judgment finding that Adidas could show it has protectable trade dress in its well-known shoe design because the design was recognizable to consumers and not functional. Adidas America Inc. et al. v. Skechers USA Inc., D. Or (August 3, 2017) (order granting in part and denying in part motion for summary judgment).
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