Luxury car manufacturer Bentley Motors has lost its appeal against a ruling which found it infringed the trade marks of a small, family company called Bentley Clothing. A full copy of the decision can be found here.
Following the ruling, Bentley Motors must stop using the trade mark BENTLEY and their combination sign – the B-in-Wings logo and the word BENTLEY (shown below) – on clothing.
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.
Read MoreIn a recent Court of Justice of the European Union (CJEU) ruling, based on a referral from the Stockholm Court of Appeal, the CJEU considered whether the distinctiveness of a sign that is to be applied to specific services should be assessed with regard to what is customary in the relevant sector. A full copy of the decision can be found here.
The Court clarified that, in the context of trade marks for services, the assessment of a sign’s distinctiveness should not always involve an assessment of norms and/or customs of the sector.
Read MoreLouis Vuitton received a favorable decision from the EU General Court (“General Court”) in June 2020 which may assist brand owners seeking IP protection of their decorative patterns. The decision confirms the distinctive character an EU trade mark must possess in order to benefit from protection throughout the EU as well as highlighting how patterns may be protected through registration as a trade mark rather than under other forms of IP protection such as copyright or design protection. However, the decision also reaffirmed the EU’s strict approach to assessing the unitary character of EU trade marks, which potentially sets a high bar for applicants to clear.
Read MoreThe Los Angeles Organizing Committee for the 2028 Olympic & Paralympic Games (LA28) has recently unveiled the official LA28 emblem, which, for the first time, is an animated emblem consisting of multiple logos (shown below). “Built for the digital age”, LA28 has designed the emblem to “evolve over time, reflecting [Los Angeles’] spirit of limitless possibility”.
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.
Read MoreHRH 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.
Read MoreHas Valentino stepped up enough to show that their Rockstud® design has acquired distinctiveness similar to Christian Louboutin’s red soles? In a recent response to a USPTO office action, Valentino asserted similar notoriety in its Rockstud® design as Louboutin’s red soles.
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.
Read MoreThe 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:
Read More“[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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