Trademark Infringement

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Trade marks will not only be associated with the company they origin from, but might also be associated with certain quality or ethical standards. Certain associations are using their trade marks only to license it to producers who fulfill a certain standard. While some jurisdictions recognize such use of a trade mark as sufficient to maintain trademark protection, the European Union Trade Mark Regulation (EUTMR) does only mentioning the term “genuine use” of a trade mark. On 8 June 2017, the Court of Justice of the European Union (CJEU) has decided whether using a trade mark only to indicate certain quality or ethical standards can be seen as “genuine use”.
Continue Reading Court of Justice of The EU Ruled on the Use of Trade Marks as Indication of Quality

On 24 April 2017, the Beijing Intellectual Property Court (“ the Court”) published 18 classic cases concerning trademarks filed in bad faith. One of these cases dealt with a invalidation action filed by Tiffany and company (“Tiffany”), the luxury jeweler.

Tiffany prevailed in the invalidation action brought in 2013 against Chinese trademark registration no. 8009772 for “蒂 凡尼” (pronounced as “Di Fan Ni” in Mandarin) on wallpaper, carpets etc. in Class 27 in the name of Shanghai Zhendi Decoration Materials Co., Ltd. (“Shanghai Zhendi”). After the Trademark Review and Adjudication Board (“TRAB”) rejected the registration, Shanghai Zhendi appealed to the Beijing IP Court.
Continue Reading Beijing IP Court Rules in Favour of Tiffany Against “Diffany”

The Olympic Games 2016 which take place in Rio de Janeiro, Brazil, from 5 to 21 August are supported by a huge volume of marketing and advertising campaigns. As many countries have done before, Brazil enacted special legislation to protect the Olympic symbols and expressions specific to the games hosted in Rio. The protection offered in these Olympic-special legislations often can go beyond what would normally be available under trademark or copyright protection laws. For example, the London Olympic Games and Paralympic Games Act 2006 created a sui generis right of association to prevent the use of any representation that is likely to suggest an association between the London Olympics and goods or services.
Continue Reading The Brazilian Olympics and Intellectual Property

On 29 September 2007, a PRC entity, Xintong Tiandi Technology (Beijing) Company Limited (“Xintong”), filed a trademark application for the word “IPHONE” in class 18 (“Opposed Mark”) with the PRC Trade Marks Office (“TMO”). The goods covered by the application are a range of leather goods, wallets and cases under sub-classes 1801 and 1802. On 26 April 2010, Apple Inc. (“Apple”) filed an opposition against the Opposed Mark. It should be noted, however, that Apple does not have any China trademark applications or registrations for the word “IPHONE” in class 18 that pre-date the filing date of the Opposed Mark.
Continue Reading Apple Loses China Trademark Case Over the Use of the Word “IPHONE” on Leather Goods

On 16 June 2016, the General Court of the European Union rejected an opposition by Fútbol Club Barcelona to the wordmark “KULE” (T‑614/14). The opposition was based on an alleged infringement of the club’s Spanish wordmark “CULE,” the term culé being a Spanish variation of the Catalan word cul and used as a nickname for supporters of the club. Apparently, this is not the only negative experience Fútbol Club Barcelona has had with the General Court in recent years. In 2015, the General Court dismissed an action brought by the club seeking registration of the outline of its crest as a Community trademark (T-615/14).
Continue Reading EU General Court: FC Barcelona Loses Dispute Over Its “CULE” Trademark

The EU Trademark Regulation (2015/2424/EU) (the “new Regulation”) amending the Community Trademark Regulation (the “old Regulation”) entered into force on 23 March 2016. Among other things, it brought about new rules concerning the transit of counterfeit trademark goods through the EU.
Continue Reading The Transit of Goods Under the New EU Trademark Regulation

In a recent decision, the Supreme People’s Court of China ruled that the use of a trademarked sign on goods manufactured in China solely for export purposes does not constitute “use” of a trademark. Consequently, such use could not be considered an infringement of a trademark registered in China.
Continue Reading Supreme People’s Court: Goods Manufactured in China for Export Do Not Infringe Chinese Trademarks

In 2013, Moncler S.P.A. (“Moncler”) became aware of the manufacture and sale of down jackets by Beijing Nuoyakate Garment Co., Ltd. (“Nuoyakate”). Nuoyakate used marks and logos confusingly similar to Moncler’s marks on its products and also applied for the registration of several trademarks and domain names confusingly similar to Moncler’s marks in China and other…
Continue Reading Moncler Awarded Highest Amount of Damages Ever for China Trade Mark Infringement

On 21 October 2015, the German Federal Court of Justice ruled that a bank cannot refuse to disclose personal data of a client if that client’s bank account was used to receive payments ‎for the sale of counterfeit trademark goods. In this case, the fundamental right of the trademark holder to protect its intellectual property prevailed over the banks’s right to secrecy.
Continue Reading Banks Must Disclose Personal Data if a Bank Account Was Used for IP-Infringing Activities

On 5 March 2015, the German Federal Court of Justice (I ZR 161/13) issued a ruling that two wordmarks that consist of the same three letters, albeit in a different order (here: IPS and ISP), might lead to confusion as to the origin of goods and services sold under these marks. In particular, the Court noted that the pronunciation of the individual letters in their given order had the same sequence of vowels (here: i-e-e, German pronunciation). Thus, the Court found there to be a likelihood of confusion between the two wordmarks that were both used for IT services.
Continue Reading Likelihood of Confusion in the Case of Wordmarks that Use Identical Letters, Albeit in a Different Order – IPS/ISP