consumer & retail – Page 3

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

Dec 22 2022

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”).

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

Dec 09 2022

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’.

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

Dec 07 2022

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.

Dior Did Not SADDLE on Distinctive Character of Its Iconic Bag

Nov 17 2022

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).

Australian Government Commits to Protecting First Nations Visual Art

Nov 02 2022

“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).

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

Oct 28 2022

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.

Urgent Action Required of Australian Businesses to Protect Their Brands Online

Oct 09 2022

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.

Keep an Eye on Your Mailbox – Appoint a UK Representative for Trade Marks Filed Through WIPO

Oct 05 2022

A direct United Kingdom (UK) trade mark application to the UK Intellectual Property Office (UKIPO) contains a requirement to name a UK address for service. In contrast, it has been a standing practice of the UKIPO to process International Trade Mark Registrations via the Madrid Protocol designating the UK without requiring a UK service address. The UKIPO would only require to specify a UK service address in circumstances where objections or oppositions are raised in relation to the International Trade Mark Registrations during prosecution. However, the recent decision in MARCO POLO (O/681/22) has called this UKIPO’s practice into question.

Can Dawgs Free-Ride on Bulls – Interpretation of Unfair Advantage for UK Trade Marks

Sep 19 2022

The UK High Court has rejected an appeal filed by Monster Energy to register its trade mark ‘RED DAWG’. The court deemed that it could take unfair advantage of the famous energy drink brand’s trade mark ‘RED BULL’. The case (Monster Energy Company v Red Bull GmbH [2022] EWHC 2155 (Ch)) was initially held before the UKIPO before Monster Energy’s appeal to the High Court.

Aug 31 2022

Cadbury has proven the adage that perseverance is the key to success as their continued and well-document pursuit over the registration of the colour purple has finally seen success in Société des Produits Nestlé S.A. v Cadbury UK Limited [2022] EWHC 1671 (Ch). The UK High Court has partially upheld the Cadbury appeal over UKIPO’s previous 2019 decision. Hopefully, this will bring clarity to businesses wishing to register colour marks instead of creating further ambiguity around the registrability requirements of colour marks and other non-traditional marks.

Tag:consumer & retail