The loss of profit calculation in Copyright (databases) and trademark infringement when deleting the pictures watermark

Judgement of the Appeal Court of Barcelona. Civil Court. Legal background The claimant entity, Schibsted (a web portal aimed to the creation, management and exploitation of websites publishing advertisements, and in particular, the website Coches.net), filed a lawsuit against the entity Autodescuento because of copyright and trademark infringement and unfair competition acts. The Commercial Court nº 8 of Barcelona, ruled Judgement of 30 October 2017, considering all the claims stated in the…


The shape of a guitar to designate musical instruments: lack of distinctivness

On June 16 2010, the applicant, Gibson Brands Inc., filed an application for a tridimensional EU trademark which represented the shape of a guitar body as follows: The goods embodied in the application of the EUTM, are those in Class 9, 15 and 25. In particular is sought the protection of musical instruments (Class 15). EUIPO accepted the registration of the subject mark on July 20, 2010 under Registration No. 9179953. On October 7, 2014, a third party filed an action for a declaration of…


Prior mark registered with a disclaimer. Effect of the disclaimer on the scope of protection of the prior mark.

Legal Background: In 2007, the Swedish Company Norrtelje Brenneri Aktiebolag, obtained the registration for alcoholic beverages in Class 33 of the Nice Classification as a national mark, for the following denominative and figurative sign: The afore mentioned registration is enclosed with a disclaimer stating that “the registration does not have rights over the wording “RoslagsPunsch”. This statement was requested by the local Office as a requirement for registration, since the word “Roslags”…


ADIDAS three vertical parallel black stripes: lack of distinctiveness

The ADIDAS group, filed an application for a figurative EU trademark dated December 18, 2013 which represents three vertical parallel black stripes: The applied goods embodied in the application form: Class 25: Clothing; Footwear; Headgear. EUIPO accepted on May 21, 2014 the registration of the mark under Registration No. 12442166. However, in December 2014, an application for declaration of invalidity was filed against the subject mark based on lack of distinctiveness pursuant to Article 59…


DISPUTE REGISTERED NAME AND TRADEMARK “TOTPRINT”

The matter of the proceeding relates to the use by the defendant of its registered name Tot Print Maestrat, S.L., as a trade name (including as internet domain www.totprint.es) for covering the sales activity relating to certain goods and services, which the plaintiff also covers on the same relevant market by means of trademarks (“Totprint”) similar to said registered name of the defendant. The following facts stand out: a) prior to the plaintiff’s trademark registrations, the defendant’s…


INDUSTRIAL DESIGN. PROCEEDING STAGE TO CHOOSE THE METHOD FOR CALCULATING DAMAGES

Although the time for declaring the criterion selected for quantifying damages may be deferred to the allegations stage, it cannot by any means jeopardize the rights to claim, defense, and submission of evidence corresponding to the other party to the proceeding. The selected criterion must be declared in a manner that is not confusing but rather, in contrast, in a manner that is obvious and at a stage of the proceeding in which the other party may not only use evidence, but also draw up the…


El titular de una marca cuya infracción ha sido declarada en un proceso judicial, puede promover un segundo proceso para que el infractor entregue toda la información sobre la red de distribución de los productos.

Article 8.1 of Directive 2004/48. Judgement of the Court of Justice (Ninth Chamber), 18 January 2017, in Case C-427/15 NEW WAVE CZ, a.s. & ALLTOYS, spol. s.r.o. Reference for a preliminary ruling from the Supreme Court of the Czech Republic submitted in proceedings between NEW WAVE CZ, a.s. & ALLTOYS, spol. S.r.o. NEW WAVE filed a first claim against ALLTOYS for having used the mark MegaBabe without their consent when offering their goods. In this first proceeding, the Czech Court…


Unfair Competition. Misleading Advertising.

Supreme Court Judgment of 11 July 2018 The claim leading to the lawsuit between two undertakings in the tool sector suggests the existence of acts of deception consisting of the press release issued by Bellota, one of two undertakings in the case, claiming that it was the first undertaking in the sector to obtain the “Q de oro” award. The plaintiff was part of the same sector as the defendant, which had earned such award before the plaintiff, even though its activity was not manufacture per se…


Is a trade mark proprietor entitled to oppose the removal by a third party of all the signs identical to that trade mark and the affixing of new signs on goods identical to those for which the trade mark has been registered with a view to importing or placing them on the market in the European Economic Area (EEA)?

Judgment of the ECJ of 25 July 2018 (Mitsubishi v. Duma and GSI, case C‑129/17) ECLI:EU:C:2018:594 Background: Mitsubishi, established in Japan, is the proprietor of a number of trade marks, including the EU word mark MITSUBISHI, for, inter alia, goods in Class 12 of the Nice Agreement, including motor vehicles, electric vehicles, and forklift trucks. MCFE, established in the Netherlands, is exclusively authorized to manufacture and place on the market in the EEA forklift trucks supplied under…


C3 SYSTEMS Case. Action for unfair competition. Revocation due to inconsistency.

SAP Alicante of 1 February 2018 (ECLI: ES: APA:2018:489) The company C3 Systems S.L. brought an action against the trading company Vejuma on the grounds of infringement of its EU trade mark and Spanish trade mark, and, in addition, an action for the declaration and the cease of acts of unfair competition. The factual grounds for both the action for trade mark infraction and the action for unfair competition consisted of the use by the defendant of the Seeglass and C3 Systems trade marks in the…