May 17th, 2010
Beifa Group Co. Ltd v OHIM, Schwan-Stabilo Schwanhaüßer GmbH & Co. KG (2010)
General Court of the Court of Justice Case T-148/08
This was an appeal against a decision of the OHIM Board of Appeal in an application for a declaration of invalidity in respect of a registered Community design.
The design in question was registered by Beifa in 2005. The application indicated that the design would be used in designs for ‘instruments for writing’. The design was used to market low cost fluorescent highlighter pens to the general public.
In 2006, Stabilo applied for a declaration that the design was invalid according to Article 25(1)(e) of the Community Designs Regulation 6/2002 (read in conjunction with harmonised German trade mark law). In summary, they alleged that the Beifa design made unauthorised use of their earlier German registered trade mark and that this use created a likelihood of confusion among the public as to the economic origin of the highlighters, because the trade mark and the design were both registered for use in respect of ‘instruments for writing’, and the design was highly similar to the earlier mark. Read the rest of this entry »
Posted in General Trademark Information | No Comments »
April 19th, 2010
Trademark registrations are territory specific, meaning that they will only entitle the owner to the exclusive right to use their brand name in a particular market (such as the United States or the European Union). Often a business will require protection from other parties free-riding or denigrating the reputation of its brand in more than one country. An international trademark registration is one way through which such protection might be obtained.
The concept of an international trademark registration (sometimes called an ‘IR’) can be somewhat misleading. This is because an application for trademark registration through the Madrid system is in fact a series of national trademark registrations, rather than one unitary international trademark registration. This is in contrast to the Community Trade Mark in the European Union, for example, where one single application will result in protection throughout the individual countries of the European Union if successful. Read the rest of this entry »
Posted in General Trademark Information, Trademarks by Region | No Comments »
April 12th, 2010
Nominet, the UK domain name registry, is planning to introduce two letter and one character domain names (e.g. ‘ba’, ‘0’, etc.). This type of domain name has previously been banned from use in relation to ‘.uk’ domain names because of a technical issue. As this issue no longer applies (except in relation to ‘com’, ‘net’ and ‘org’), around 2,000 new domain names can be released into the public domain.
The domains would be made available first to parties with a registered trademark identical to the domain name in question, and then to the general public. Where there are two or more parties with a pre-existing trademark registration that would entitle them to use the domain name, a number of proposals have been considered. For example, one possible solution could be to use a sealed bid auction for domains where there are two or more interested parties of the same business type. Read the rest of this entry »
Posted in Europe, General Trademark Information | No Comments »
April 9th, 2010
A recent decision in Australia highlights the growing trend in trademark infringement litigation towards defending well-known brands against ‘own brand’ look-alikes being sold in supermarkets.
This practice has been going on for some time and involves producing goods in the same market as very well-known brands, and offering them for sale in very similar packaging to that used by those brands.
Of course, these brands are usually protected by a trademark registration and therefore their owners have the right to prevent the use of indicia associated with their trademark where that use is liable to mislead the public as to believing that the goods or services in question originated from them. Read the rest of this entry »
Posted in Oceania | No Comments »
March 23rd, 2010
Google France SARL and Google Inc v (1) Louis Vuitton Malletier SA (2) Viaticum SA and Luteciel SARL (3) Centre national de recherché en relations humaines (CNRRH) SARL and others (2010) Cases C-236/08 – C-238/08
The European Court of Justice (ECJ) has now delivered its long-awaited judgment in the Google Adwords trademark infringement case.
The statements of law made by the Court are set out below. In summary, it was found that the provision of the Google Adwords service and any other such services cannot be restrained by trademark owners on the basis that the service constitutes trademark infringement. This was because Google and any other such service providers were merely providing a facility (which may or may not be used to carry out trademark infringement). This was not the same as using a trademark in the sale of goods or services, which must be proven to establish trademark infringement.
It was also noted however that the use made of Google Adwords by an individual could potentially amount to trademark infringement. Read the rest of this entry »
Posted in Trademarks by Region | No Comments »
March 22nd, 2010
The global recession has had a negative impact on international trademark filing under the Madrid system, a press release from the World Intellectual Property Organisation (WIPO) reports. International trademark filing for 2009 was down 16% on the previous year. International trademark registration was also down, by 12% on the previous year.
This is to be expected in a downturn. Trademark registration is of course linked to business activity. For example, parties would generally look to acquire exclusive rights to use a brand name when launching a new business, expanding into a new product line or entering a new market. All of these activities are naturally going to be affected when companies internationally are facing difficulties with finance and a reduction in consumer demand. Read the rest of this entry »
Posted in General Trademark Information | No Comments »
March 17th, 2010
The UK Intellectual Property Office has published a consultation paper seeking views on proposed changes to the Trade Mark Rules 2008. It is concerned that two of the procedures currently provided for by the Trade Mark Rules are no longer in tune with the needs of business.
This is mainly due to the fact that the procedures, which have been available for some time, have had a fairly limited uptake. Bearing in mind that the Intellectual Property Office is in the process of upgrading its information technology infrastructure, it would be possible to obtain cost savings whilst doing so if the facility to carry out these procedures does not have to be built-in. It is hoped that the responses to the consultation paper will aid the Intellectual Property Office in deciding whether or not to remove these facilities. Read the rest of this entry »
Posted in Europe | No Comments »
