Tag: consumer & retail

1
The MetaBirkins Battle
2
If You Want It, You Should Have Done a Search On It: Why Trademark Searches are Essential Before Settling Down With a New Brand
3
The Battle of the Supermarkets Vol. 2 – GINgle Bells, GINgle Bells, GIN All the Way
4
Trademark Applications and Infringements in Germany: The Importance of Potential Revocation and Non-Use
5
The Battle of the Supermarkets – Evergreening of Trade Marks and Potential Bad Faith
6
Old Lady Shows Her Youth With Win in Significant Trade Mark Ruling Concerning NFTs
7
Dior Did Not SADDLE on Distinctive Character of Its Iconic Bag
8
Australian Government Commits to Protecting First Nations Visual Art
9
Who Really Owns Your Business’s Trade Mark? Federal Court of Australia Confirms That a Trade Mark Can Be Registered in The Name of a Company’s Sole Director and Shareholder
10
Urgent Action Required of Australian Businesses to Protect Their Brands Online

The MetaBirkins Battle

In 2021, artist Mason Rothschild launched metabirkins.com and announced that he would be selling non-fungible tokens (“NFTs”) called MetaBirkins. The MetaBirkins offering consisted of 100 NFTs depicted as fury purses that resembled the well-known Birkin bag. Hermѐs, owner of the BIRKIN trademark as well as the BIRKIN trade dress, took issue with Rothschild’s MetaBirkins NFTs and sent a cease and desist letter. Despite Hermѐs’ demands, Rothschild refused to discontinue the sale of the MetaBirkins NFTs.

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If You Want It, You Should Have Done a Search On It: Why Trademark Searches are Essential Before Settling Down With a New Brand

Have you chosen a brand only to learn months later that the U.S. Patent and Trademark Office is refusing to register it due to someone else’s prior trademark registration or pending application? The USPTO’s most recent Q4 2022 data indicates that it takes 8 months or more for a trademark application to be reviewed—and ideally approved—by an examiner. Given that prolonged timeline, any issues with the application, such as a similar third-party mark that could prevent your own registration, may not surface until you or your company has already invested heavily in the mark.

This raises the question: what can be done for brands eager to launch but that want some measure of comfort that their trademark will be valid?

The answer: Searching.

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The Battle of the Supermarkets Vol. 2 – GINgle Bells, GINgle Bells, GIN All the Way

It is beGINning to look a lot like a legal disputes saga between supermarkets in the UK. We have recently covered an ongoing dispute between Lidl and Tesco (see here), which relates to an alleged trade mark infringement. This time, Marks & Spencer (M&S) are suing the largest Europe’s discount grocery chain Aldi for copying their registered designs of the light-up Christmas gin bottles. This is the second legal case in recent times brought by M&S against Aldi, with the first one involving the famous Colin the Caterpillar cake, which has since been settled. Notably, the case at hand in relation to gin bottles demonstrates the benefits of registering designs in the UK, especially if such design is unique and has a significant value to the brand, and the brand would like to protect it against any copycats.

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Trademark Applications and Infringements in Germany: The Importance of Potential Revocation and Non-Use

Hamburg, Germany – Not only known for its famous seafood and the third largest European seaport for goods and cargo handling1, but also a considerable and noteworthy jurisdiction when it comes to the protection and enforcement of trade mark rights in preliminary proceedings.

The Higher Regional Court of Hamburg found in a recent trade mark dispute in preliminary injunction proceedings (Decision of 29 September 2022 – 5 U 91/21) between the “Deutsche Telekom” (“Claimant”) and the Spanish telecommunication company “Telefónica” and its German subsidiary (together “Defendants”), that the application and use of a “T” consisting of five dots in combination with various Telefónica company symbols (e.g. shown below left and middle) (“Contested Signs”) constitute an infringement of the well-known “T-brand” (shown below right) (EUTM 215194 ; DE 39529531) of Deutsche Telekom (“T-Trade Mark”).

Telefónica company symbol (Contested Sign (1))
Telefónica company symbol (Contested Sign (2))
Deutsche Telekom “T-Trade Mark”

The Court found that there was a likelihood of confusion between the opposing signs, confirmed that the “T”-brand has a reputation within the meaning of Art. 9 (2) lit. c) of the EU Trade Mark Regulation (Regulation (EU) 2017/1001), and therefore concluded that the defendant’s trade mark infringes the claimant’s trade mark rights resulting in the grant of a preliminary injunction (“PI”).

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The Battle of the Supermarkets – Evergreening of Trade Marks and Potential Bad Faith

Two well-known grocery stores, Tesco and Lidl, are involved in an ongoing trade mark dispute (Lidl Great Britain Limited v Tesco Stores Limited [2022] EWHC 1434 (Ch)). While the trial is set to take place in 2023, the recent developments in relation to arguments of bad faith are noteworthy, especially for brands engaged in trade mark refiling, or ‘evergreening’.

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Old Lady Shows Her Youth With Win in Significant Trade Mark Ruling Concerning NFTs

Juventus FC (affectionately nicknamed the “Old Lady”) has won a noteworthy ruling in its case of trade mark infringement brought against the non-fungible token (“NFT“) producer Blockeras s.r.l (“Blockeras”). The Rome Court of First Instance, on 20 July 2022, ruled that the unauthorised minting, advertising and sale of NFTs1 can infringe the trade mark rights of the relevant owner.

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Dior Did Not SADDLE on Distinctive Character of Its Iconic Bag

Another unfavourable decision on non-traditional trade marks has landed, now in relation to Dior’s iconic Saddle bag. The EUIPO’s Second Board of Appeal decided that Dior’s Saddle bag is not distinctive with respect to handbags. The decision is seen as surprising yet not unpredictable, given the recent history of unsuccessful trade mark applications for 3D signs (for example, see our previous article on the Moon Boot case here).

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Australian Government Commits to Protecting First Nations Visual Art

“80% of the souvenirs sold in Australia purporting to represent First Nations cultures are in fact imitation products. These inauthentic items have no connection to First Nations peoples and are often cheaply made imports.”

This extraordinary statistic was presented by Ann Sudmalis MP, Chair of the Standing Committee on Indigenous Affairs which tabled the 2018 Report on the impact of inauthentic art and craft in the style of First Nations peoples (Report).

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Who Really Owns Your Business’s Trade Mark? Federal Court of Australia Confirms That a Trade Mark Can Be Registered in The Name of a Company’s Sole Director and Shareholder

Ensuring trade marks are registered in the correct name is of critical importance, especially when registration of the trade mark is challenged.

This was amply demonstrated in the recent Federal Court of Australia decision of Watson as Trustee for the Watson Family Trust v Cosmetic Warriors Ltd [2022] FCA 700.

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Urgent Action Required of Australian Businesses to Protect Their Brands Online

From 24 March 2022, Australian businesses have been able to register “.au” URLs (a Uniform Resource Locator or URL is the “address” to a website), rather than the traditional “.com.au”, “.net.au” or “.org.au” URLs.

The Australian .au Domain Administration (auDA) gave registrants (registrants are the “owners” of URLs) of “.com.au”, “.net.au” and “.org.au” URLs until 20 September 2022 to register the equivalent “.au” URL. That is, the registrant of www.australiandomain.com.au had priority over registering the www.australiandomain.au URL. From 3 October 2022, however, third parties have been free to register .au URLs, regardless of whether they own the corresponding “.com.au” etc domain name.

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