Tag: Trademark

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Reputation and likelihood of confusion – it’s all a bit of a Messi…
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A Right Royal Rejection: “Royal Butler” Trade Mark Application Denied in the UK
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Are Valentino’s Rockstud® Shoes as Distinctive as the Red Soles?
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What is the Italian historical trade mark?
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Show me the money: Supreme Court rules that trademark infringers may disgorge profits even if the law was not willfully violated
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After the CJEU’s decision now there is a final High Court judgment in the Sky v SkyKick case
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COVID-19: USPTO further extends certain filing and payment deadlines to June 1, 2020 for those affected by COVID-19 outbreak
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Kraft v Bega: Australian appeal court decision reaffirms the perils of relying on unregistered trade mark rights
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Is it a bird? Is it a plane? No, it’s an infringement of a reputable mark!
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Free Extensions of Time from IP Australia and IPONZ for COVID-19 delays

Reputation and likelihood of confusion – it’s all a bit of a Messi…

CJEU determines no likelihood of confusion between footballer’s “Messi” figurative mark and earlier MASSI mark.

Whilst debate will continue to rage as to whether Messi or Ronaldo is the world’s best male football player, the Court of Justice of the European Union (the “CJEU”) has ruled that Argentine superstar can register his name as a trade mark after an almost decade long legal battle.

In an interesting decision for trade mark fanatics, irrespective of their interest in football, the CJEU stated that Lionel Messi’s reputation could be taken into account, without any evidence of said reputation being provided, when weighing up whether the public would be able to determine the uniqueness of Messi’s mark.

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A Right Royal Rejection: “Royal Butler” Trade Mark Application Denied in the UK

HRH Prince Charles’ former butler has had his application to register a “Royal Butler” logo as a UK trade mark denied by the UK Intellectual Property Office following a successful opposition by Lord Chamberlain, on behalf of Her Majesty the Queen. A full copy of the decision can be found here.

Following the recent media coverage regarding the various brand names used and trade marks filed by the Duke and Duchess of Sussex, known to many as “Harry & Meghan”, this decision is a timely reminder that UK trade mark law restricts the registration of names, brands and logos which may mistakenly suggest Royal patronage.

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What is the Italian historical trade mark?

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.

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Show me the money: Supreme Court rules that trademark infringers may disgorge profits even if the law was not willfully violated

The U.S. Supreme Court confirmed that brand owners are not required to prove willful intent before obtaining a defendant’s lost profits. On April 23, 2020, the Supreme Court resolved a longstanding circuit split and unanimously held that trademark infringers may have to hand over their profits even if they did not willfully infringe.

In Romag Fasteners, Inc. v. Fossil Group, Inc., the Supreme Court was tasked with determining whether the rule that a plaintiff can win a profit remedy only after showing a defendant willfully infringed its trademark can be reconciled with the statute’s plain language. Ultimately, the Supreme Court sided with the plaintiffs, Romag Fasteners (Romag), holding that:

“[a] plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award.”

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

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.

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COVID-19: USPTO further extends certain filing and payment deadlines to June 1, 2020 for those affected by COVID-19 outbreak

In a Notice issued April 28, 2020, the U.S. Patent and Trademark Office (USPTO) further extended certain filing and payment deadlines to June 1, 2020, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. This Notice supersedes the prior March 31, 2020 Notice that offered 30-day extensions to certain deadlines through April 30, 2020.

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Kraft v Bega: Australian appeal court decision reaffirms the perils of relying on unregistered trade mark rights

In the case Kraft Foods Group Brands LLC v Bega Cheese Limited [2020] FCAFC 65, the Full Court of the Federal Court of Australia has dismissed Kraft’s appeal of a decision entitling Bega to exclusive use of the iconic yellow lid and yellow label with a blue or red peanut device on its peanut butter jars.

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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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Free Extensions of Time from IP Australia and IPONZ for COVID-19 delays

The COVID-19 outbreak has impacted all businesses in one way or another and IP Australia understands that dealing with IP matters is not necessarily the highest priority for some businesses.

As a result, from 22 April 2020 IP Australia is providing free three month extensions of time for most deadlines but not renewal and continuation fees deadlines. Additionally, the six month grace period is still available and ordinary extensions of time will remain available for periods of longer than three months.

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