A recent preliminary ruling by the Court of Justice of the European Union (“CJEU”) in the joint cases (C-148/21 and C-184/21) between a luxury fashion brand known for its signature red-soled heels Christian Louboutin and an e-commerce giant Amazon might mark a start of an era of increased accountability of marketplaces in relation to listings of third parties they accommodate on their platforms.
Does evidence showing booking, advertising and selling services in the EU constitute genuine use if the service actually registered takes place abroad?
This was the question contemplated by a recent decision of the General Court. The case T-768/20 (Standard International Management LLC v EUIPO) addresses the use of trade marks in the EU where the relevant brand operates hotel and leisure facilities outside the jurisdiction.
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.
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  EWHC 2155 (Ch)) was initially held before the UKIPO before Monster Energy’s appeal to the High Court.
In a recent alert, we painted the big NFT picture, highlighting what a non-fungible token (NFT) means and the opportunities they present (see here). In this second part of the NFT series, we will take a deeper look at local regulatory control (or lack thereof) in this uncharted territory.
Italian transposition of the Copyright Directive (as defined below) introduces some interesting additions within the free uses regulation, but it might not represent the relevant breakthrough for the press industry that its minor players, as well as the EU legislator, wished for.
Use of Ferrari’s trade mark in a fashion show or on social media requires consent. This is the lesson we assume Philipp Plein has recently learnt following a couple of legal defeats before the Italian Courts that ruled in favour of Ferrari.
In a ruling issued by the Court of Genova last June, the Court ruled in favour of Ferrari for the illegitimate use of Ferrari’s trade marks on Plein’s Instagram account. The designer on that occasion posted several pictures as well as Instagram stories showing some of his clothing line with Ferrari’s trade marks in the background. Ferrari successfully argued that in those shots Philipp Plein was unlawfully appropriating the positive image and reputation of the well-known car company by using its trade marks for promotional purposes.
In another recent case, the Court of Milan ordered Plein to remove from its website, social media, and other online platforms all the videos and images showing Ferrari cars and trade marks. The Court also ordered the payment, in favour of Ferrari, of €300,000 in damages plus legal fees as well as the publication of the decision in two national newspapers. Furthermore, in the event in which that Philipp Plein would not promptly remove the contested images and videos representing Ferrari cars and trade marks, it will have to pay a penalty of €10,000 for each day of delay in the removal of the infringing images and videos. To view the decision, click here.
An interesting recent decision by the Intellectual Property Enterprise Court (IPEC) on an unusual set of facts may provide an opportunity for brand owners to prevent unauthorised third parties from piggy-backing off a trade mark to drive traffic to their competing sites or product offerings. Uniquely, this has been found in circumstances which do not amount to traditional “bait and switch” or passing off and where consumers are not confused about the origin of the goods.
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.
We increasingly hear about “brand value” along with figures and suggested strategies to assist brands in difficult times.
In Italy new provisions have been approved to recognise the value of the so called historical trade marks (ie. marchio storico). To be clear, these provisions are not related to COVID-19 economic measures aiming to boost the Italian economy. They have been in the agenda for quite some time with the aim of promoting the Made in Italy and increase the value of Italian brands abroad. However, they can be considered as additional measures available to companies in such challenging times.