Tag Archives: trademarks

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

CJEU gives guidance on 3D shape marks

On September 16, 2015, the Court of Justice of the European Union (“CJEU”) responded to three preliminary questions referred to it last year from the High Court of England and Wales. The CJEU gave guidance on the registrability or otherwise of 3-dimensional shapes as trade marks. Although the facts concerned the bitterly fought dispute concerning … 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

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

Tobacco plain packaging laws: public health as a basis for restricting branding rights

Should a government be allowed to take away branding rights for a product that is widely acknowledged to be unhealthy?  That’s exactly what happened in Australia—in December 2012, Australia’s controversial “plain packaging” tobacco law came into force with the enactment of the Tobacco Plain Packaging Act 2011.  The Act requires cigarette companies to manufacture and … 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

Registering your trademark in the U.S.? A few tips on successfully navigating the process

Brand owners can obtain significant protection in the U.S. if their trademark is registered with the United States Patent and Trademark Office (USPTO).  While the registration process can be challenging, an important new study demonstrates that filing through experienced lawyers is one of the best ways to successfully navigate this process. (And no, we didn’t … Continue Reading
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