Tag: Distinctiveness

1
Dior Did Not SADDLE on Distinctive Character of Its Iconic Bag
2
Can Dawgs Free-Ride on Bulls – Interpretation of Unfair Advantage for UK Trade Marks
3
Cadbury’s Purple Reign: High Court Allows Cadbury to Register Their Iconic Purple Colouring
4
Putting Position Marks Front and Centre: CJEU Considers Assessment of Position Marks for Services
5
Louis Vuitton playing chess or checkers? The CJEU annuls’ the invalidation of Louis Vuitton’s EU trade mark
6
Is it a bird? Is it a plane? No, it’s an infringement of a reputable mark!
7
The Claridge’s Affair: A win, but at what cost?
8
The Scotch Whisky Saga: Where Name and Reputation is not enough
9
“Three stripes and you’re out!” – The EU General Court rules Adidas’ three stripe trade mark invalid
10
Bega claims the peanut butter throne in $60M war with Kraft Heinz

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

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.

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Cadbury’s Purple Reign: High Court Allows Cadbury to Register Their Iconic Purple Colouring

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.

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Putting Position Marks Front and Centre: CJEU Considers Assessment of Position Marks for Services

In a recent Court of Justice of the European Union (CJEU) ruling, based on a referral from the Stockholm Court of Appeal, the CJEU considered whether the distinctiveness of a sign that is to be applied to specific services should be assessed with regard to what is customary in the relevant sector. A full copy of the decision can be found here.

The Court clarified that, in the context of trade marks for services, the assessment of a sign’s distinctiveness should not always involve an assessment of norms and/or customs of the sector.

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Louis Vuitton playing chess or checkers? The CJEU annuls’ the invalidation of Louis Vuitton’s EU trade mark

Louis Vuitton received a favorable decision from the EU General Court (“General Court”) in June 2020 which may assist brand owners seeking IP protection of their decorative patterns. The decision confirms the distinctive character an EU trade mark must possess in order to benefit from protection throughout the EU as well as highlighting how patterns may be protected through registration as a trade mark rather than under other forms of IP protection such as copyright or design protection. However, the decision also reaffirmed the EU’s strict approach to assessing the unitary character of EU trade marks, which potentially sets a high bar for applicants to clear.

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Is it a bird? Is it a plane? No, it’s an infringement of a reputable mark!

The EUIPO recently upheld an opposition by DC Comics to protect its reputable SUPERMAN mark from a similar sign, despite the applicant’s sign covering a different class of goods. The decision confirms that, for there to be a sufficient risk of injury under Article 8(5) EUTRM, the public must perceive a ‘link’ between the sign and the earlier mark. The mere fact the two marks cover different classes of goods and services is not inherently a barrier to such a link. Here the link arose largely from the earlier mark’s reputation, and commercial connections between the two classes in question.

Some will see the EUIPO as swooping to the rescue to protect the hard-earned reputations of brands; others will see this as an unreasonable expansion of rights beyond a mark’s designated classes, and a Kryptonite to legitimate activity.

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The Claridge’s Affair: A win, but at what cost?

Claridge’s Hotel Limited (Claridge’s) recently succeeded in challenging in IPEC the use of the CLARIDGE name by Claridge Candles Limited (Claridge Candles) – a small one-person business.

However, the success came at with a cost for the world renowned hotel as in doing so it lost one trade mark registration entirely and had a second mark reduced in scope due to a non-use counterclaim, highlighting one of the risks of instituting trade mark infringement action.

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The Scotch Whisky Saga: Where Name and Reputation is not enough

William Grant & Sons, the distiller, blender and owner of Glenfiddich, the independent whisky company which markets itself as the “World’s Most Awarded Single Malt Scotch Whisky”, was unsuccessful in its recent opposition of Glenfield’s label trade mark application.

Back in 2018, Mumbai-based business man Vivek Anasane filed a trade mark application for the label of his ‘Glenfield’ Scotch whisky in an attempt to expand his drinks company into the UK. This was quickly opposed by William Grant & Sons who argued that the Glenfield mark was “visually and phonetically highly similar” to the Glenfiddich word mark.

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“Three stripes and you’re out!” – The EU General Court rules Adidas’ three stripe trade mark invalid

On 19 June 2019, the EU General decided a case about the validity of Adidas’ EU trade mark registration for three stripes. In the General Court’s decision (see here), the Court upheld the invalidity of the mark on the basis that: (i) the mark wasn’t used consistently and evidence of reversed/amended versions of the mark was inadmissible; and (ii) Adidas failed to show acquired distinctiveness across the EU, providing admissible evidence for only five EU Member States.

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Bega claims the peanut butter throne in $60M war with Kraft Heinz

What you need to know

  • Under Australian law, an entity can’t transfer an unregistered trade mark to another entity without also transferring its entire business.
  • To transfer a trade mark without transferring a business, the transferor first needs to register its trade mark.
  • Failing to register a valuable trade mark used in a business can have major unforeseen consequences in the context of M&A transactions, especially where the business is operated by a subsidiary in a corporate group.
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