Tag: Trademarks Court Decisions

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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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A figurative mark? A position mark? Or just a trade mark?
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Overseas manufacturers supplying goods for ultimate sale in Australia liable for trade mark infringement under Australian law

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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A figurative mark? A position mark? Or just a trade mark?

The Court of Justice of the European Union (CJEU) recently confirmed that when assessing the actual use of a mark and the scope of protection afforded by a trade mark, the defining factor is the way in which it is perceived, and it is irrelevant that it is classified as a figurative or a position mark. In the CJEU’s decision in ECLI:EU:C:2019:471, the CJEU rejected German shoemaker Deichmann’s appeal to have Spanish competitor Munich SL’s trade mark revoked. The case revolves around the registered mark below, depicting a solid line cross on the side of a dotted outline of a shoe.

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Overseas manufacturers supplying goods for ultimate sale in Australia liable for trade mark infringement under Australian law

By Gregory Pieris and Allison Wallace

Playgro Pty Ltd v Playgo Art and Craft Manufactory Limited [2016] FCA 280

Manufacturers selling products into Australia be warned: the fact you are located outside of Australia will not protect you from infringing Australian trade marks. This was the message the Federal Court handed down in the recent decision of Playgro Pty Ltd v Playgo Art and Craft Manufactory Limited [2016] FCA 280.

Playgo was a Chinese manufacturer of children’s toys sold for many years under the “PLAYGO” trade mark. Playgo agreed to supply its toys to a number of well-known Australian retailers, who then imported the products into Australia and sold them in stores across the country. Australian company Playgro commenced proceedings against Playgo, arguing that it infringed various Australian registered trade marks for “PLAYGRO”.

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