The bad faith conundrum in the EU continues – KOTON, SKY, ANN TAYLOR, NEYMAR, CAFÉ DEL MAR
by Florica Rus, Verena von Bomhard - Published on 31 October at Kluwer Trademark Blog Bad faith is on the rise – whether in reality or as a useful weapon against trade marks is another question. Recently, both the General Court (GC) and the Court of...
De-branding and rebranding are trademark infringements! CJEU on Mitsubishi forklift trucks matter
On 25 July 2018 (C-129/17), the CJEU decided that de-branding and rebranding of goods prior to any trade within the EEA without the trademark proprietor’s consent constituted ‘use in the course of trade’ of the originally affixed trademark and could, therefore, be prohibited by the...
CJEU on the Kit Kat shape and acquired distinctiveness of EU trade marks for shapes
On 25 July 2018, the CJEU handed down its ruling in the latest edition of the battle between Nestlé and Mondelez over the KIT KAT shape (C-84, 85, 95/17 P). This time, the discussion focused on whether a non-traditional EU trade mark that is not...
AFTERSUN is not a DONUT!! – No monopoly to AFTERSUN, even in Spain
Spain is obtaining the questionable reputation for protecting terms that are completely descriptive in other major languages as trademarks. MATRATZEN is one (in)famous example, DONUT is another. However, the term AFTERSUN, commonly applied to skin care to be used after sun bathing, has now been...
CJEU: Puma’s feline jumps high: EUIPO must take into account earlier decisions recognizing reputation of a mark invoked in an opposition
Athanasia Giannopoulou, Verena von Bomhard (BomhardIP) By judgment of 28 June 2018 (C‑564/16 P), the CJEU rejected an appeal filed by the EUIPO. The case was, in essence, about whether and to which extent the EUIPO could or even had to take into account its own...
Competent or not competent? That’s the question…
The Board of Appeal went beyond its competence ruling on issues not disputed in the appeal, says the General Court The Fourth Board of Appeal (BoA) of the EUIPO has once again been told off by the General Court (GC). In its decision of 6 June...
Luxury and Glamour win: KENZO ESTATE for wines and other goods misappropriates reputation of KENZO
CJEU, 30 May 2018, C-85/16 P, C-86/16 P – Kenzo Tsujimoto v. EUIPO / Kenzo [KENZO ESTATE] The fame of the fashion brand KENZO is such that it can be held against the registration of KENZO ESTATE as an EUTM for wines and “western liquors” and...
DAYADAY – General Court once again obliges the EUIPO to assess the precise level of a claimed reputation
The General Court annulled a decision by the Second Board of Appeal of EUIPO, based on an insufficient (or, rather, inexistent) assessment of the reputation claimed by the opponent (GC, 1 June 2018, T900/16, only available in Spanish and French). The case concerned largely identical marks–...
CJEU puts old seniority claims at stake: If national marks were vulnerable when they lapsed or were surrendered, they still are!
On 19 April 2018, the CJEU handed down its judgment in the matter Peek & Cloppenburg (PUC), a referral from the German Supreme Court in a litigation between two German companies of that same name (one of which runs under the name of Peek &...
The Griffin beats the Winged Bull: Marriott prevails before the GC
On 15 March 2018, Marriott Worldwide Corp., assisted by Anna Reid (D. Young & Co.), scored a major victory at the General Court (case T-151/17) against EUIPO and Mr. Johann Graf. Johann Graf had registered the „winged bull“ device or „taurophon“ as shown above on the...