non-use – IP Law Watch

Genuine Use Of a Trade Mark In Relation To Second-hand Parts: The Ferrari TESTAROSSA Case

Nov 30 2023

In a recent decision, the EUIPO Board of Appeal provided further guidance on what constitutes genuine use of a trade mark in relation to sales of replacement parts in the EU. The Board of Appeal held that genuine use cannot be established if the proprietor of the mark is not actively involved in the sale of the second-hand goods or their spare parts. The decision follows the 2020 CJEU decision in the Ferrari Spa v Du case, where the CJEU held that use of a trade mark amounts to genuine use if the trade mark holder sells second-hand goods directly.

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.

After the CJEU’s decision now there is a final High Court judgment in the Sky v SkyKick case

Apr 29 2020

After the CJEU’s ruling earlier this year (as discussed here), the Sky v Skykick case has now returned to the English High Court and Lord Justice Arnold on 29 April 2020 issued a final judgment in the case (see full text of the judgment here).

Although Sky’s trade marks were found to be partially invalid on the ground that they were applied for in bad faith, Sky was still ultimately successful in establishing infringement.

Tag:non-use