IP Cases & Articles

Celebrating 100 newsletters: Trade mark decisions 2001-2018

To mark our 100th newsletter we’ve created a whistle-stop tour of the eighteen years of case law that we have reviewed and written about. Technologies, brands and products we could not have contemplated nearly two decades ago have challenged rights owners, academics and the courts alike, seeing case law extend and reshape the legal landscape.

If this whets your appetite for more you’ll find all these cases reported on our website or in our European Trade Mark Decisions book (email us at subscriptions@dyoung.com for a copy).

2001 BRAVO: Merz & Krell GmbH & Co
C-517/99, 04 October 2001

Relevant to absolute grounds; customary (generic) marks; Article 3(1)(d) TMD.

Registration of a mark is only precluded where the signs or indications of which the mark is exclusively composed, have become customary in the current language or bona fide and established practices of the trade to designate the goods/services.

2002 ARSENAL v REED: Arsenal Football Club v Matthew Reed
C-206/01, 12 November 2002

Relevant to infringement & opposition grounds; double identity; post-sale confusion; trade mark use; Article 5(1)(a) TMD; Article 6 TMD.

Infringement may still arise even when goods marked as ‘unofficial’ if use of a mark creates the impression of a material link.

2003 TWO STRIPES: Adidas-Salomon AG et al v Fitnessworld Trading Ltd
C-408/01, 23 October 2003

Relevant to infringement and opposition grounds; reputation; confusion; decoration; dilution; unfair advantage; Article 5(2) TMD. Even if the offending sign is an embellishment or decoration, an earlier mark with a reputation can benefit from protection even if there is no confusion, as long as a link can be established between the sign and the earlier mark.

2004 LA MER: La Mer Technology Inc v Laboratoires Goemar SA
C-259/02, 27 January 2004

Relevant to revocation; genuine use; evidence after filing revocation action; Article 10(1) TMD; Article 12(1) TMD.

The CJ indicated that a relatively low volume of goods marketed under the trade mark may be compensated by high intensity/value and stated that genuine use of a mark after the filing of the revocation action is not necessarily irrelevant and the court should, in some circumstances, take this into account.

2005 HAVE A BREAK: Société des Produits Nestlé v Mars UK Ltd
C-353/03, 07 July 2005

Relevant to absolute grounds; slogans; acquired distinctiveness; composite marks; Articles 7(1)(b) and 7(3) EUTMR.

Acquisition of distinctive character through use must be as a result of use as a trade mark. The mark for which registration is sought ‘need not necessarily have been used independently’.

2006 ELIZABETH EMANUEL: Elizabeth Florence Emanuel v Continental Shelf 128 Ltd
C-259/04, 30 March 2006

Relevant to revocation; deceptiveness; assignments; goodwill; personal names; Article 3(1)(g) TMD; Article 12(2)(b) TMD.

This case highlights the careful consideration required when assigning personal trade marks, as once the mark has been assigned, the applicant may lose control over their name and may not be able to trade under it in the future.

2007 LIMONCELLO: Shaker di L Laudato & C. Sas v Limiñana y Botella, SL
C-334/05, 12 June 2007

Relevant to infringement and opposition grounds; likelihood of confusion; distinctive and dominant elements; global assessment.

Article 8(1)(b) EUTMR.

Assessment of confusion must be appreciated globally, based on the overall impression of the marks, bearing in mind their dominant and distinctive elements.

2008 INTEL: Intel Corporation Inc v CPM United Kingdom Ltd
C-252/07, 27 November 2008

Relevant to infringement & opposition grounds; reputation; detriment; dilution; unfair advantage; Article 4(4)(a) TMD.

The requirements for infringement of a mark with a good reputation by a similar mark used on dissimilar goods/services cannot be listed exhaustively. The assessment must be global, taking all relevant facts into consideration.

2009 L’Oréal V BELLURE: L’Oréal SA et al v Bellure NV et al
C-487/07, 18 June 2009

Relevant to infringement and opposition grounds; comparative advertising; look-a-likes; without due cause; Articles 5(1) and 5(2) TMD.

Rights owners have rights to protection which will ensure that earlier marks can fulfil their functions, including functions not only as guarantees of origin and quality, but also to their investment or advertising.

2010 LEGO: Lego Juris A/S v EUIPO (OHIM) (Mega Brands Inc)
C-48/09, 14 September 2010

Relevant to invalidity; shapes & 3D marks; shapes necessary to obtain a technical result; Article (7)(1)(e)(ii) EUTMR.

The CJ held that the brick shape was invalid because its shape was necessary to obtain a technical result. The fact that the shape of the bricks could take many forms did not preclude its technical function. The question of distinctiveness acquired through use has no bearing on the refusal of a mark on the grounds of a shape necessary to obtain a technical result.

2011 INTERFLORA: Interflora Inc et al v Marks & Spencer plc et al
C-323/09, 22 September 2011

Relevant to infringement and opposition grounds; keywords; dilution; essential function; free-riding; reputation; Articles 5(1)(a) and 5(2) TMD and 9(1)(a) and (c) EUTMR.

Use of an earlier mark as a keyword may be prevented where the signs and goods/services are identical and if that use adversely affects one of the earlier marks functions.

2012 IP Translator: Chartered Institute of Patent Attorneys v Registrar of Trade Marks
C-308/10, 19 June 2012

Relevant to EUTM procedures & practice; Nice class headings; specification of goods/services; Communication 4/03.

An application for a mark in the EU (national or community) must identify, with sufficient clarity and precision, the goods and services to be protected so the competent authorities and competitors can determine the extent of the protection sought. It is essential to ensure that the desired goods/services are specifically claimed.

2013 SPECSAVERS: Specsavers International Healthcare Ltd et al v Asda Stores Ltd
C-252/12, 18 July 2013

Relevant to revocation; genuine use; likelihood of confusion; reputation; Articles 9(1)(b) and (c) and 15(1) EUTMR.

Use of separately registered marks together may constitute genuine use. Variations of marks that do not alter the distinctive character of the registered mark are permissible. However, the perception of a mark plays a decisive role in the assessment of confusion and unfair advantage and the context in which an allegedly infringing sign is used must be considered.

2014 5 STRIPES: K-Swiss Inc v EUIPO (OHIM) (Künzil SwissSchuh AG)
T-85/13, 13 June 2014

Relevant to absolute grounds; descriptive & non-distinctive marks; distinctive character; signs capable of constituting a trade mark; Article 7(1)(b) EUTMR.

The 5-stripe mark registered for footwear was invalid as being devoid of distinctive character. The court held that the sign must be independent of the appearance of a product, otherwise consumers may see it as merely decorative.

2015 IMPULSE: Iron & Smith kft v Unilever NV
C-125/14, 03 September 2015

Relevant to infringement and opposition grounds; reputation; genuine use; Article 4(3) TMD.

In national oppositions, an earlier reputed EUTM does not need be reputed in the national state where the opposition occurs, but the EUTM proprietor should demonstrate that a commercially significant part of the national public is familiar with the EUTM; that they make a connection with the national application; and that there is damage as a result.

2016 HERITAGE AUDIO: AMS Neve Ltd v Heritage Audio SL
[2016] EWHC 2563 (IPEC), 11 October 2016

Relevant to jurisdiction on infringement of EUTM; Article 97(5); Brussels I Regulation (EU) No. 1215/2012.

An English court held that it did not have jurisdiction to decide a claim in relation to acts of infringement of a European Union Trade Mark (EUTM) under Article 97(5) of the EUTM Regulation, in circumstances where the potentially infringing acts committed by the defendant took place in Spain where the defendant was domiciled. The court did, however, have jurisdiction in relation to infringement of various UK national marks.

2017 R v M: R v M, R v C, R v T
[2017] UKSC 58, 03 August 2017

Relevant to infringement; criminal sanctions; exhaustion of rights; Section 92(1) TMA.

The UK Supreme Court ruled that criminal penalties can not only be imposed on businesses that engage in the sale of ‘true’ counterfeit goods but also those who sell ‘grey goods’ – goods that have been legitimately produced but whose sale has not been authorised by the relevant trade mark owners.

2018 DEBRISOFT: Junek Europ-Vertrieb v Lohmann & Eauscher International
C-642/16, 17 May 2018

Relevant to parallel imports; repackaging; Article 15.

This case held that re-labelling the packaging of a medical device may not constitute trade mark infringement where the packaging has not been modified or opened, the new, small label has been affixed to an unprinted part of the packaging, the trade mark is not concealed and the label confirms the responsible parallel importer.

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