Tag: Distinctiveness

1
Frucor given red card over ‘V’ green trade mark
2
Chocolate Slab-Gate
3
U.S. Court finds Adidas’ Stan Smith shoe trade dress protectable
4
Say My Name: Beyoncé files trademarks for her newborn twins’ names
5
The protective capacity of 3D trademarks
6
Distinctiveness of a mark (packaging of Knoppers waffles) – ruling of the EU Court of Justice
7
Italian Supreme Court on Secondary Meaning: When a Registered Generic Sign can Become a Trademark
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Take a Closer Look Next Time you Flag a Black Cab…
9
Louboutin Succeeds Again in Long Standing European Union Trade Mark Opposition Over Red Sole
10
Fashion Designer Tory Burch Awarded US$41 million in U.S. Trade Mark Case

Frucor given red card over ‘V’ green trade mark

On 2 July 2018 the Federal Court of Australia dismissed Frucor Beverages Ltd’s appeal regarding the registrability of the colour Pantone 376C with respect to the energy drink ‘V’.

The Frucor mark in question, Australian trade mark no. 1496541, was first filed with IP Australia on 5 June 2012. Registration of this mark was opposed by the Coca Cola Company on two grounds. First, Coca Cola alleged that while the trade mark was filed for Pantone 376C, the swatch attached to the application that visually demonstrated the colour was not actually Pantone 376C. Furthermore, it argued that regardless of the colour actually filed, it was not capable of distinguishing Frucor’s goods from other similar goods and services. The Registrar of Trade Marks dismissed the first ground of opposition but supported the second and the registration was denied.

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Chocolate Slab-Gate

Waitrose has agreed to stop producing “copycat” chocolate slabs following an ongoing dispute with Hotel Chocolat.

Hotel Chocolat accused Waitrose of infringing its intellectual property rights in its distinctive curved shaped chocolate slab.  This was further reinforced when individuals were taking to Twitter to question whether Hotel Chocolat were actually producing the chocolate slabs for Waitrose.  Hotel Chocolat requested that Waitrose removed the offending chocolate slabs from sale.

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U.S. Court finds Adidas’ Stan Smith shoe trade dress protectable

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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Say My Name: Beyoncé files trademarks for her newborn twins’ names

Long gone are the days where the first registration of your child’s name was on their birth certificate.  On 26 June 2017, U.S. Trade Mark Application Numbers 87506186 and 87506188 were filed for the names of Beyoncé Knowles-Carter and Shawn ‘Jay-Z’ Carter’s newborn twins ‘Rumi Carter’ and ‘Sir Carter’ by Beyoncé’s holding company, BGK Trademark Holdings.

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Distinctiveness of a mark (packaging of Knoppers waffles) – ruling of the EU Court of Justice

We reported previously, in Bulletin No. 2 /2016 (page 15), on a case of the registration of the graphic trademark (shown below, packaging for Knoppers waffles, without any additional markings, with protection only for the two-colored background) for goods from class 30 of the Nice Classification, namely confectionery products, chocolates, chocolate products, cakes, ice creams, and ingredients for manufacturing such products.

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Italian Supreme Court on Secondary Meaning: When a Registered Generic Sign can Become a Trademark

On 19 April 2016, the Italian Supreme Court passed on secondary meaning, overruling two sets of proceedings of the courts of merits which declared the invalidity of a trademark.

The case arose some debate among professionals since the trademark declared invalid was registered by a very well-known bathroom tissue producer which invested substantial efforts for decades to ensure that its registered generic sign (“Rotoloni” which literally means big toilet roll) had acquired distinctiveness by way of secondary meaning.

As a result of its efforts, the defendant offered a public opinion survey evidencing that 51% of interviewed consumers were recognizing the generic sign at issue as distinctive of products coming from a specific company. Read More

Take a Closer Look Next Time you Flag a Black Cab…

By Briony Pollard and Serena Totino

Last month, a quintessential London symbol was subject to the scrutiny of the Hon. Mr. Justice Arnold in a case concerning Community and UK trade marks for the iconic shape of the black London taxi cab in Class 12 (the Trade Marks), owned by The London Taxi Corporation Limited (LTC).

LTC claimed that Frazer-Nash Research Limited and Ecotive Limited (FNR) had intended to deceive the public as to the origin of the Metrocab, a new model of the London taxi. LTC argued that a result of FNR adopting the specific shape it had for the Metrocab, was that consumers would think that it emanated from the same source as LTC’s taxis. As such, FNR threatened to infringe the trade marks and to commit passing off by marketing the Metrocab. FNR contended that the trade marks were invalidly registered because they lack distinctive character and give substantial value to the goods.

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Louboutin Succeeds Again in Long Standing European Union Trade Mark Opposition Over Red Sole

Christian Louboutin (Louboutin) has again been successful in a long running opposition proceeding filed by Roland SE (Roland) against its red sole trade mark in the European Union.

Louboutin has faced legal challenges around the world in registering and enforcing its signature red sole on its shoes.  In 2010, Louboutin filed a Community Trade Mark application for the below trade mark in class 25 for “high-heeled shoes (except orthopaedic footwear)” (Louboutin Mark):
shoe

 

(Louboutin Mark)

 

 

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Fashion Designer Tory Burch Awarded US$41 million in U.S. Trade Mark Case

In November 2013, fashion designer Tory Burch sued Youngran Kim, and three companies controlled by Kim, for counterfeiting and trade mark infringement relating to the sale of jewellery. The jewellery featured a registered logo trade mark design owned by Tory Burch. While this was not the basis of Tory Burch’s legal claim, it is worth noting that, as well as featuring Tory Burch’s logo device, the defendants’ jewellery also closely resembled jewellery designs that had been released by Tory Burch, as seen below.

bracelet1

bracelet2

 

 

 

 

 

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