Tag Archives: brand protection

ASICS’ ONLINE SALES RESTRICTIONS CONFIRMED AS ILLEGAL BY DUESSELDORF HIGHER REGIONAL COURT

On 5 April 2017, the Duesseldorf Higher Regional Court confirmed the August 2015 decision of the Federal Cartel Office finding that it is anti-competitive and therefore illegal to impose on distributors a general prohibition on the use of online price comparison portals. The Cartel Office had faulted Asics over imposing the following restrictions on its … Continue Reading

ISPs ordered to block websites infringing trademarks and must pay for implementation

On 6 July 2016, the Court of Appeal of England and Wales upheld the validity of injunctions requiring the five leading Internet service providers (“ISPs”) in the UK to block consumer access to websites marketing counterfeit goods and infringing trademarks.  Significantly, the ISPs, as intermediaries for the infringement, were burdened with the costs of implementing … Continue Reading

Guess Wins Latest Trademark Infringement Dispute Against Gucci in the French Courts

The Court of Paris has ruled in favour of Guess in the latest lawsuit brought by Gucci for alleged infringement of some of its trademarks.  Gucci claimed that Guess was infringing its rights by selling wallets, belts, and other products whose designs copied or mimicked its own. On 30 January 2015, the Court of Paris … Continue Reading

Giant multinational Unilever drops suit against innovative start-up Hampton Creek over eggless “mayonnaise”

On October 31 of last year, Unilever filed a lawsuit against Hampton Creek, a start-up company that makes Just Mayo, an eggless spread that tastes like mayonnaise, only to drop the suit a month and a half later. Unilever claimed that Just Mayo was stealing market share from its Hellman’s and Best Foods mayonnaise products … Continue Reading

ISPs ordered to block websites infringing trademarks

The English High Court ordered recently ordered several internet service providers (ISPs) to block access by their subscribers to certain websites that advertised and sold goods infringing certain registered trademarks. The claimants (owners of a large number of UK-registered trademarks for Cartier, Montblanc, IWC and other luxury brands) sought orders requiring the ISPs to block, … Continue Reading

Ralph Lauren succeeds in opposing “parody trademark” before EU Court

With Contributions From Ramon Luque The General Court (EU) recently delivered a judgment which could offer brand owners greater protection against adaptations and parodies of their brands.  The case is  The Polo/Lauren Company v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM). In late 2009, FreshSide Ltd filed a Community trade … Continue Reading

Michael Kors, Costco settle “Bait and Switch” Mother’s Day ad dispute; raises question of best brand policing strategy

With Contributions From Matthew Verdin Michael Kors, LLC and Costco Wholesale Corp. recently settled a trademark infringement lawsuit that the famous fashion designer company filed against the warehouse giant over a nationwide “bait and switch” ad campaign for Mother’s Day.  The lawsuit raises the question of how brand owners can best police their trademarks for … Continue Reading

Belgian court declares Louboutin trademark invalid in three European countries

Christian Louboutin SA’s registered trademark on red-soled shoes is one of the most litigated intellectual property rights in the fashion industry in recent years.  In a decision on the validity of the trademark in March, the Brussels District Court held against Louboutin and declared the trademark void in Belgium, the Netherlands and Luxembourg. Louboutin had … Continue Reading

Blomqvist v. Rolex: EU Court of Justice says a foreign online sale is enough to stop counterfeits at the EU border; No need to show further evidence of ‘targeting’ EU consumers

A fake ‘Rolex’ sold from a website in China is delivered to Denmark  The case began in January 2010 when Danish resident Mr. Blomqvist purchased a ‘Rolex’ watch from a Chinese online shopping site.  The order and payment were made through an English version of the website.  The seller dispatched the watch from Hong Kong.  … Continue Reading

The protection of brands in Europe using a Community Registered Design – Trunki v Kiddee

“Copycat” branding — where a lesser known brand mimics the appearance or design of a more successful or well-known brand — is becoming more common. Copycat products will often undercut the better known brand on pricing, in order to attempt to access a piece of the market captured by that brand. Designers looking to use … Continue Reading

Swiss court refuses to scrub toothpaste fine for import bans

Prices of branded goods in Switzerland have historically been higher than in neighboring countries.  As a result, measures that impede parallel imports into Switzerland have long been seen as preventing Swiss customers from purchasing cheaper products from the European Union (EU), and have triggered complaints to the Swiss competition authority (ComCo).  ComCo has actively investigated … Continue Reading

What every employer in England and Wales needs to know: Looking back at 2013 and forward to 2014

Last year saw the introduction of a plethora of UK employment law changes, many of which were designed to simplify employment law and reduce “red-tape” for employers. Below, we summarise these changes, future changes and the implications for brand businesses.  Changes during 2013 Unfair Dismissal. The compensatory award an Employment Tribunal may order for an … Continue Reading

In China, it’s use it or lose it or else, get to be well-known: lessons to draw from Burberry’s battle to defend its signature tartan

A brand iconic for its tartan-lined raincoats faces stormy weather in China (at least in a metaphoric sense).  Burberry — like other brands with a strong presence in the People’s Republic— confronts the challenge of protecting its trademark under Chinese law, and there are lessons to absorb from its experience.  Burberry is currently appealing a … Continue Reading

Is counterfeit enforcement in New York limited to the supply side?

In April, CovBrands reported that New York City Councilwoman Margaret Chin made a renewed push to pass a bill that would criminalize the purchase of counterfeit goods.  If passed, shoppers caught purchasing counterfeit goods could be fined up to US$1,000 or face a year in prison, provided that the shopper “knew or should have known” … Continue Reading

Recent trends in defamation cases over online reviews

Brand owners today face a constant challenge in monitoring their company’s online reputation and, where appropriate, responding to user comments and reviews.  Usually, negative online feedback can be addressed through standard customer relations.  Sometimes, though, a user review goes so far beyond the pale that the brand owner might consider suing the user, as well … Continue Reading

Abercrombie and Fitch under investigation in France over potentially discriminatory recruitment policies

Abercrombie and Fitch – renowned for its attractive shirtless model hosts greeting customers at store entrances – is currently under investigation by the French human rights watchdog (Defenseur des Droits) over claims that it hires employees based solely on their good looks. The watchdog is concerned that Abercrombie’s recruitment methods are based on discriminatory criteria … Continue Reading

IP rights enforcement at the EU border: Customs detained €1 billion worth of fake goods in 2012

The import of counterfeit goods into Europe continues to be a major concern for both brands and consumers. The EU Commission’s annual report on customs actions to enforce IP rights states that EU Customs detained almost 40 million products suspected of violating IP rights in 2012. The figure is lower than in 2011, but the … Continue Reading

UPDATE: Rihanna successfully sues Topshop for using her image on t-shirts

You may remember that, back in May, CovBrands reported that Rihanna was suing Topshop for selling a t-shirt, which bore her image, without her consent.  The judgment is in and the High Court has ruled that Topshop is liable on the grounds of passing off. However, the court did not take the opportunity to introduce … Continue Reading

Resale price maintenance and vertical price-fixing agreements in the French luxury perfumes sector

Last month the highest French court – the Cour de cassation – upheld a fine of more than € 40 million imposed on 13 luxury perfume manufacturers (including Chanel and Guerlain) and three giant retailers on the French market (Marionnaud, Séphora and Nocibé) for price fixing.  The Cour de cassation confirmed the finding of an … Continue Reading

Adidas v. Christian Faith Fellowship Church: an object lesson in the pitfalls of aggressive trademark enforcement

A David and Goliath matchup currently before the United States Trademark Trial and Appeals Board shows that aggressive, adversarial trademark enforcement may not always be the best approach. The dispute pits global sportswear powerhouse Adidas AG against the Christian Faith Fellowship Church, a small-town congregation located outside of Chicago, Illinois. Adidas applied in 2009 to … Continue Reading

“Bring your own device to work” – how to embrace the trend without risking your brand

Since Apple launched the first iPhone in 2007, the popularity of smart phones and tablets has sky-rocketed.  These devices, with their sleek design, touch screens and easy access to a myriad of entertainment options, have fast become the preferred method of communication for executives. In recent years, a growing number of companies have allowed employees … Continue Reading

Cease and desist letters to “superfans”: the tricky art of protecting a trademark while promoting a brand

Nutella—the delicious nutty chocolate spread made by Ferrero—has its fans, and then it has its superfans.  In the latter category is Sara Rosso, who hosts World Nutella Day every February 5 through a website, Facebook page, and Twitter account. But Rosso recently canceled the popular holiday after Ferrero sent her a cease and desist letter, which drew … Continue Reading

Selling branded goods at “fire sale” prices: there’s insurance for that?

Clothing retailers, particularly in these economic conditions, often have to steeply mark down prices in order to move merchandise.  When a retailer does so, the brand may see the re-pricing as a degradation of its name.  If the brand brings a lawsuit against the retailer over the fire sale prices, does the retailer’s insurer have … Continue Reading

Mixed success in protecting trademarks

Louis Vuitton is a staunch protector of unauthorized uses of its trademarks, including its well-known ‘Toile Monogram’ pattern.  Trademark infringement is the unauthorized use of another’s mark in a way that creates a likelihood of confusion as to source or sponsorship.  Louis Vuitton’s success, however, has been mixed.  This suggests that the decision whether or … Continue Reading
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