We are delighted to share an interesting article by our colleagues in France, Catherine Muyl and Marion Cavalier, about whether and how a common word in a regional dialect can qualify as a trademark in France. They describe a case where a company named Krampouz that makes plates for cooking crepes registered the marks “KRAMPOUZ” … Continue Reading
With the end of the transition period on 31 December 2020, the EU legislation governing the EU trademark and design system ceased to apply to the UK. While Brexit trade deal talks were in full swing, the SPB Team worked through all administrative details to comply with the new Brexit requirements, which took effect on … Continue Reading
False claims of use and fake specimens of use have bedeviled the US Patent and Trademark Office (USPTO) and legitimate trademark owners for many years. The Trademark Modernization Act of 2020 (“TMA”) — part of the COVID-19 relief legislative package signed by President Trump on December 27, 2020 — provides significant relief for trademark owners’ … Continue Reading
In 1988, the Danish movie called “Babette’s Feast,” based on a story by Danish novelist Karen Blixen (Isak Dinesen), earned an Oscar for best foreign language film. We remember this much-loved movie about loss, survival and the art of French food. For those of you who are interested in IP and are going to share … Continue Reading
Ferrari 250 GTO, often hailed as the most expensive car in the world, was initially introduced by Ferrari in 1962. Only 36 models of 250 GTO were exclusively produced between 1962 and 1964. The fact that each buyer had to be personally approved by Enzo Ferrari only added to the exclusivity of this particular car … Continue Reading
The Court of Justice of the European Union (“CJEU”) has ruled that, after a decade-long legal battle, football ace Lionel Messi has the right to register his name as a trade mark. This interesting case confirms that celebrity names are registrable as trade marks. However, whilst there are some advantages to seeking such protection, there … Continue Reading
Using first names as style names to assist consumers in distinguishing between certain items, styles or washes within a collection is a widespread practice in the fashion industry. Compared to numerical identifiers, names may trigger emotions and are much easier to remember. Style names may be used in manifold ways, e.g. on labels sewn in … Continue Reading
Parallel import is not easily tolerated by brand owners. Parallel import products, sometimes referred to as grey market goods, create market distortions, attack the official supply chain, double the risk of product liability and dilute trademarks. Brand-owners know, however, that trademarks are not a viable tool to stop parallel import of foreign cosmetic brands into … Continue Reading
On June 30, 2020, the U.S. Supreme Court ruled that Booking.com was not a generic term and could be eligible for federal trademark registration.[1] This 8-1 ruling overturned the “sweeping rule” of the U.S. Patent and Trademark Office (“USPTO”) that the combination of a generic word and .com is generic and thus not eligible for … Continue Reading
For years Western companies have relied on Chinese factories to manufacture their products at low cost and export them back to other markets to be sold with high margin of profit. This is normally referred to as OEM manufacturing, where OEM stands for Original Equipment Manufacturer. This was for decades the main business model for … Continue Reading
On June 15, 2020, the United States Patent and Trademark Office (USPTO) announced a prioritized examination procedure for COVID-19-related trademark and service mark applications. Usually, the USPTO examines applications in the order in which they are received, with limited circumstances under which an applicant may file for a petition for the advance of an application. … Continue Reading
Open for registration until 30 June 2020, the European Intellectual Property Office (EUIPO) is about to launch the third edition of its EUIPO Trade Mark and Design Education Programme (ETMD EP). The ETMD EP is a training programme for IP practitioners delivered by EUIPO staff, IP professionals and academics. It focuses on all practical aspects … Continue Reading
Oklahoma is one of a number of states that allows the sale of medical cannabis. The high consumer demand, combined with relatively low license fees and barriers to entry in the market, has led to reportedly fierce competition among dispensaries. One dispensary, operated by “DOK Corporation,” sought to set itself apart from the competitors by … Continue Reading
The Supreme Court arguments in USPTO v. Booking.com B.V.[1] on May 4, 2020, marked a historic first: the Supreme Court held oral arguments remotely, by telephone. As a result, lawyers and Supreme Court enthusiasts were able to listen to the argument in real time. Further, both the Petitioner USPTO and the Respondent Booking.com were represented … Continue Reading
On April 23, 2020, the Supreme Court ruled that a trademark owner may recover an infringer’s profits under the federal Lanham Act without having to prove that the trademark infringement was “willful.” The ruling, in Romag Fasteners, Inc. v. Fossil Group, Inc. (Docket No. 18-1233), resolved a split among the Circuit Courts on this issue. … Continue Reading
On April 10, 2020, 3M Co. sued an unauthorized vendor for attempting to sell an NYC agency $45 million worth of 3M-brand respirator masks at 500% of 3M’s list price, or more. Amid the COVID-19 pandemic, as government agencies scramble to procure personal protective equipment (PPE), unscrupulous parties are capitalizing on the crisis through price … Continue Reading
On March 31, 2020, in response to the Coronavirus Aid, Relief, and Economic Security (“CARES”) Act, the United States Patent and Trademark Office (“USPTO”) extended the time to file certain trademark-related documents and fees. In its announcement, the Director of the USPTO determined that the outbreak prejudices the rights of trademark applicants, registrants, and owners, … Continue Reading
While the world deals with the growing global pandemic caused by the novel Corona Virus, SARS-CoV-2, and the COVID-19 disease that it causes, some out there are trying to take advantage of the crisis by seeking trademark protection over COVID and/or CORONAVIRUS. These attempts are not only in bad taste but are also unlikely to … Continue Reading
On 29 January 2020, brand owners across the EU were reassured in relation to the content of their trade mark specifications following the decision of the Court of Justice of the EU (CJEU) in Sky v SkyKick (C-371/18). The CJEU provided welcome confirmation that trade mark registrations with specifications comprising of broad terms such as … Continue Reading
In what are challenging economic times, concentric diversification is increasingly being considered by businesses as a way of gaining an advantage over competitors. In the automotive sector in particular, manufacturers are expanding their offerings, particularly in the after-sales market, to supplement sales of traditional products. The recent High Court decision in Bentley 1962 Ltd v … Continue Reading
There are some colours that consumers associate with particular brands. For example, EasyJet is known for its distinctive orange livery, while Cadbury is known for the dark purple colour which it uses on the packaging of some of its chocolate bars and in its advertising. However, it is far from straightforward for brands to register … Continue Reading
Consistency and repetition are important in building a brand. Or are they? The digital economy is evolving so quickly that it has pushed brand owners to challenge trademark fundamentals by adopting trademarks that evolve as well. Proponents of such shifting trademarks, called “fluid” marks, believe that they attract the attention of potential consumers, increase brand … Continue Reading
On June 24, 2019, the US Supreme Court invalidated the Lanham Act’s ban on registering “immoral or scandalous” trademarks. In Iancu v. Brunetti, the Court held that that the ban, in Section 2(a) of the Lanham Act, violated the First Amendment because it required the Government to discriminate against certain viewpoints: marks considered to have … Continue Reading
In VersaTop Support Sys., LLC v. Ga. Expo, Inc., 2019 U.S. App. LEXIS 11404 (Fed. Cir. Apr. 19, 2019), the Federal Circuit turned its eye to the Trademark Statute and reaffirmed that the cornerstone of an infringement action under the Lanham Act – with or without “use in commerce” as that term is defined in … Continue Reading
