IP Law Watch

Don’t Bank-sy on Trade marks: Banksy loses EU trade mark due to “bad faith”

Sep 22 2020

Banksy’s trade mark for one of his most famous artistic designs has been declared invalid by the European Union Intellectual Property Office (the “EUIPO”) on the grounds that it was filed in bad faith. The EUIPO finding him having engaged in “inconsistent with honest practices” in his attempt to protect his trade mark. A full copy of the decision can be found here.

The EUIPO said Banksy was attempting to use trade mark law to protect his artwork from being used commercially by third-parties because he couldn’t copyright it and maintain his anonymity. This decision highlights that the court will take a dim view of anyone – even famous artists – attempting to find a loophole in the law.

Reputation and likelihood of confusion – it’s all a bit of a Messi…

Sep 21 2020

CJEU determines no likelihood of confusion between footballer’s “Messi” figurative mark and earlier MASSI mark.

Whilst debate will continue to rage as to whether Messi or Ronaldo is the world’s best male football player, the Court of Justice of the European Union (the “CJEU”) has ruled that Argentine superstar can register his name as a trade mark after an almost decade long legal battle.

In an interesting decision for trade mark fanatics, irrespective of their interest in football, the CJEU stated that Lionel Messi’s reputation could be taken into account, without any evidence of said reputation being provided, when weighing up whether the public would be able to determine the uniqueness of Messi’s mark.

A Right Royal Rejection: “Royal Butler” Trade Mark Application Denied in the UK

Sep 15 2020

HRH Prince Charles’ former butler has had his application to register a “Royal Butler” logo as a UK trade mark denied by the UK Intellectual Property Office following a successful opposition by Lord Chamberlain, on behalf of Her Majesty the Queen. A full copy of the decision can be found here.

Following the recent media coverage regarding the various brand names used and trade marks filed by the Duke and Duchess of Sussex, known to many as “Harry & Meghan”, this decision is a timely reminder that UK trade mark law restricts the registration of names, brands and logos which may mistakenly suggest Royal patronage.

Can’t “Shake It Off” Yet: Court Denies Taylor Swift’s Motion to Dismiss Copyright Infringement Lawsuit

Sep 04 2020

On September 2, 2020, a California federal judge denied musician Taylor Swift’s motion to dismiss copyright infringement claims related to the lyrics in Swift’s hit song Shake It Off. On remand from the Ninth Circuit, the district court held the merger doctrine did not apply at this stage and that plaintiffs Nathan Butler and Sean Hall sufficiently alleged a protectable sequence of creative expression and substantial similarity in the lyrics at issue. This ruling comes nearly three years after Hall and Butler originally filed suit, and nearly one year after the Ninth Circuit breathed new life into the case by reversing the district court’s prior dismissal of this lawsuit.

Are Valentino’s Rockstud® Shoes as Distinctive as the Red Soles?

Aug 18 2020

Has Valentino stepped up enough to show that their Rockstud® design has acquired distinctiveness similar to Christian Louboutin’s red soles? In a recent response to a USPTO office action, Valentino asserted similar notoriety in its Rockstud® design as Louboutin’s red soles.

PTAB’s Motion to Amend Patentability Powers

Jul 27 2020

In a 2-1 split decision on Wednesday, July 22, 2020, the Federal Circuit confirmed that the Patent Trial and Appeal Board (“PTAB“) had the authority to reject substitute claims under 35 U.S.C. §§ 101 and 112, statutory grounds not available to the PTAB for evaluating patentability of granted patent claims in inter partes review (“IPR“). (Uniloc 2017 LLC, v. Hulu, LLC et al., Case No. 2019-1686, slip op. at 3 (Fed. Cir. July 22, 2020).)

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

Jun 30 2020

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.

Jun 12 2020

On 11 June 2020, the Court of Justice of the European Union (CJEU) handed down its decision in the referral from the Belgium Companies Court (Tribunal de l’entreprise de Liège) arising from copyright infringement proceedings by Brompton Bicycle Ltd (Brompton) against a Korean company Get2Get Chedech (Get2Get) relating to its folding bike.

The decision is good news for designers and creative businesses as it lays a foundation for new opportunities for copyright protection and enforcement in Europe. This evolving area of law now requires a low threshold for protection, with a suggestion from the CJEU that minor creative choices in products will be sufficient for a finding of copyright protection.

Jun 02 2020

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.

Protection of store layout under copyright law: the KIKO case

May 30 2020

The Italian Supreme Court decision on the KIKO case (Cass. 780/2020) is the most recent judgement made in the wake of the Cofemel decision (case C-683/17) and follows the UK IPEC decision in Response Clothing (click here for our previous blog post).

In this latest development, KIKO S.p.a, a well-known make-up store was able to secure copyright protection for its signature store layout, made of its open space entrance with digital screens, the white/black/pink/purple color combination, the disco lighting effects, the size, proportions, materials and position of furniture.