Bird & Bird | Brand Writes

In a judgment published on 19 April 2024, the Italian Supreme Court (“SC”), provided some interesting guidance about exclusive licences granted by joint owners of a trade mark.  The case concerned a long-standing Italian company, Legea S.r.l., and its founding family (Acanfora).  Legea S.r.l. has operated in Italy since 1966, and is involved in the manufacture, production and marketing of sportswear, sports apparel and related articles under the following trade…

How strict are the requirements for proving acquired distinctiveness throughout the EU? This question has been bothering trade mark owners for years. In a recent decision, the General Court raises the bar for evidence of acquired distinctiveness. The Background In 1998, well-known Champagne producer Veuve Clicquot sought protection for “wines from Champagne” in class 33 for the following colour: In the “Description” section of the trade mark application, the following…

By PI order of December 27, 2023, the IP Specialized Division of the Court of Rome provided some interesting remarks regarding the legitimacy of name protection rights when using a third-party stage name as a company name, insignia, and de facto trade mark. In particular, the Court has ordered an Italian pizzeria to remove all references to the name of the famous Italian actor. Totò (Antonio Griffo Focas Flavio Angelo…

22nd May 2024 To what extent can product packaging be an illicit look-alike of a competitor’s product packaging?  A ruling by the Court of Turin provides some guidance on look-alikes and trade dress protection.  Look-alikes are deemed to contravene Italy’s unfair competition rule. Consequently, the Court granted a preliminary injunction in favor of the applicant. This case provides an insight into how Italian courts will assess infringing products of this nature. The…

A challenge by 7-Eleven has seen Seven lose its Australian registered trade mark for “7NOW” for the vast majority of goods and services covered by the registration. This serves as a stark reminder to trade mark owners to use their registered trade marks as trade marks and for the goods and services for which they are registered. Background Seven operates the Seven Network, a major Australian commercial free-to-air television network.…

Green trade marks are trade marks that include any word related to the environment (such as “sustainable”, “eco”, “environment” or “green”) or images (such as flora, the planet or scenery etc.). These trade marks are used by companies who want to communicate environmental aspects and practices of specific products, product groups or even of their whole business. With various studies showing that over 50% of all consumers consider environmental aspects…

In a case centred around the iconic Dutch biscuit  – the stroopwafel – the highest trademark court of the Benelux recently gave some welcome guidance on the burden of proof for showing bad faith. Bad faith EU and Benelux trademark law protect against the filing of trademarks in bad faith. Although a broad term that is meant to encompass a variety of different factual situations, the concept of bad faith…

The high profile dispute between supermarket retailers Lidl and Tesco has now come to a head at the Court of Appeal, with Lidl emerging as the winner. The dispute related to Tesco’s adoption in 2020 and subsequent use of its Clubcard Prices logo for its discount price scheme, which Lidl claimed infringed a number of its IP rights in the well known Lidl logo. Lidl’s logo was protected as a…

On 20th September 2023, the Italian Supreme Court issued an interesting decision that clarifies some questions concerning the qualification of the strength of a trade mark and the corresponding protection against the likelihood of confusion. Background – dispute between “Boss” and “Il boss dei panini” In 2016, a company active in the catering sector, Big Food Catering Industries – Ristorazione e Fast Food, filed an application for registration of the…

  Is the mark “Melbourne Bone and Joint Clinic” (the MBJC Mark) for medical and orthopaedic surgery type services in classes 35 and 44 registrable as a trade mark? In Melbourne Bone and Joint Clinic Pty Ltd v Registrar of Trade Marks [2024] FCA 53, the Federal Court of Australia found that the MBJC Mark was descriptive of the services offered thereunder and lacked the distinctiveness required for registration. Background…

Trade marks grant their owner the exclusive right to offer the goods for which the trade mark is registered. Once the original goods are placed on the market within the European Economic Area (“EEA”), this right is however exhausted, meaning that the trade mark owner cannot oppose the further distribution of its products based on trade mark rights. This principle of exhaustion, stipulated in Art. 15 (1) EUTMR, has an…

If a company registers an identical or similar company name in the UK with Companies House, submitting a complaint with the Company Names Tribunal (“CNT”) can be an effective way to challenge them.  In a related article,  we discussed what you would need to submit a successful complaint, the possible issues that may arise, the expected timescale and some practical tips. In this article, BrandWrites looks at the defended CNT actions to date and…

Verdes sought to invalidate a 3D mark including colour claims for the Rubik’s cube The Board of Appeal agreed with the Cancellation Division that the mark was invalid as it consisted exclusively of the shape of goods necessary to obtain a technical result The absence of ‘shape’ per se does not exclude colours from obtaining a technical result On 20 October 2023 the First Board of Appeal of the EUIPO…

Brand owners often struggle to protect their look-and-feel against free riders. A ten-year review of the EUIPO’s case-law shows that the look-and-feel of reputed marks – ranging from their logo, colour scheme to even their typical font – can be protected against imitations of this look-and-feel, even when the word elements completely differ. Hopefully, national courts follow suit. This article also contains some practical guidance on how to reach this…

It is well known that one of the main functions of a trade mark is to identify a person or trader’s products or services. In this way, trade marks must be unique or distinctive.  What if then, a person or individual is the product being sold? Could they, for example, seek to register their appearance as a trade mark?  Are human faces even registrable as trade marks? In a recent…