Tag: Trade mark infringement

1
High Court of New Zealand Trade Mark Clash Over the Colour Green
2
“Lettuce Turnip the Beet” Pun on T-Shirts Not Trademark Use, Ninth Circuit Affirms
3
Don’t mess with Ferrari: the Prancing Horse legal drama
4
Down N’ Out – Down on their luck
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Ferrero successfully enforces the Tic Tac shape mark in Italy
6
SENSIS v SENSES – Federal Court makes findings of deceptive similarity
7
New Balance Unsuccessfully Challenges Trade Mark Infringement Claim in China but Walks Away with a Significantly Reduced Liability
8
A Second Helping of Kebab
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That’s “a Lot of Kebab”!

High Court of New Zealand Trade Mark Clash Over the Colour Green

The High Court of New Zealand in Energy Beverages LLC v Frucor Suntory NZ Limited [2020] NZHC 3296 ruled that energy drink company Frucor Suntory NZ Ltd’s (Frucor) non-traditional green colour trade mark was valid. This decision is a rare example of a New Zealand based Court analysing non-traditional marks and highlighting the difference to Australia’s position. A full copy of the decision can be found here.

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“Lettuce Turnip the Beet” Pun on T-Shirts Not Trademark Use, Ninth Circuit Affirms

The owner of the trademark “LETTUCE TURNIP THE BEET” cannot prevent third parties from printing the mere phrase on t-shirts, tote bags, or other products. The U.S. Court of Appeals for the Ninth Circuit affirmed on January 20, 2021 that consumers are likely to purchase such products because they find the phrase aesthetically pleasing and not because they associate the phrase with any particular source. LTTB LLC v. Redbubble, Inc., 19-16464 (9th Cir. 2021).

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Don’t mess with Ferrari: the Prancing Horse legal drama

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.

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Down N’ Out – Down on their luck

In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd [2020] FCA 193

Sydney burger chain Down N’ Out is looking to appeal Federal Court Justice Anna Katzmann’s ruling in a case brought by American fast food giant In-N-Out Burgers, Inc. (In-N-Out). In her decision handed down earlier this year, Justice Katzmann found that Down N’ Out infringed In-N-Out’s registered trade marks and engaged in misleading and deceptive conduct and passing off. At a hearing last week, her Honour made declarations regarding Down N’ Out’s infringing conduct and granted Down N’ Out leave to appeal the orders. The determination of compensation will take place after any appeal.

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Ferrero successfully enforces the Tic Tac shape mark in Italy

Many of us had a Tic Tac box in our pockets as kids, no matter the country we grew up in. Ferrero Spa (“Ferrero”), the Italian manufacturer of Tic Tac (and lots of other delicious confectionary products) registered the Tic Tac box as a trade mark in several jurisdictions, including Italy.

After succeeding before the CJEU in the invalidation action against BMB sp. z o.o. earlier this year (click here), in a recent case brought before the Italian courts, Ferrero successfully defended its shape marks, despite the invalidity claim brought by S.r.o. Mocca spol. (“Mocca”), a Czech company selling Bliki-branded mints in an identical container.

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SENSIS v SENSES – Federal Court makes findings of deceptive similarity

The Federal Court of Australia has found that the use of “SENSES DIRECT” was deceptively similar to an applicant’s earlier registered “SENSIS” trade marks. Sensis Pty Ltd v Senses Direct Mail and Fulfillment Pty Ltd [2019] FCA 719 concerned the Australian marketing and advertising business, Sensis (Applicant), who brought a claim for trade mark infringement against Senses Direct Mail and Fulfillment (Respondent), a direct mail services business. The Respondent cross-claimed on the grounds of non-use, arguing for the removal of SENSIS from the Trade Mark Register in relation to certain class 35 services.

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New Balance Unsuccessfully Challenges Trade Mark Infringement Claim in China but Walks Away with a Significantly Reduced Liability

In a recent appeal decision in China, the international sportswear brand New Balance has unsuccessfully challenged a finding of trade mark infringement with respect to a Chinese language equivalent for NEW BALANCE. However, New Balance was able to reduce the amount payable as a result of its infringement by 95%.

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A Second Helping of Kebab

Additional Damages for Past Trade Mark Infringements

In June 2014 the Federal Court made its first award of additional damages for trade mark infringement under the ‘Raising the Bar’ amendments to the Trade Marks Act 1995 (TM Act). We reported on the original judgment in our 23 June 2014 alert, which you can find here.

Today, the Federal Court of Australia handed down another judgment in that case. This second judgement suggests that additional damages may also be available for trade mark infringements that occurred before 15 April 2013.

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That’s “a Lot of Kebab”!

Additional Damages Awarded for Trade Mark Infringement

Trade mark owners can take encouragement from the Federal Court of Australia’s readiness to award additional damages as a deterrent from further infringement. The Court made its first award of additional damages for trade mark infringement in a case about kebabs, where a claim for actual loss from an infringement could not be made. Additional damages are a useful weapon in a brand owner’s arsenal. Read More

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