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DeutschClothing items under the copyright protection regime: the importance of the aesthetic element.
Background of the case. The entites Cofemel and G-Star both are in the design business, the manufacturing and trade of clothes. Both are designing jeans, jumpers and shirts. In august 2013, G-Star filed a lawsuit based on intellectual property right´s infringement and unfair competition acts before the Portuguese Courts. G-Star argued that the items they produce (jeans, shirts, jumpers) should be considered as intellectual creations sufficiently original and thus they are granted protection…
The targeted public as main criteria to determine the competent Court in infringement cases
Background of the case AMS Neve is an entity based in the United Kingdom which core business is audio equipment and Heritage Audio, is an entity settled in Spain dealing with the same kind of goods. In 2015 AMS Neve filed a lawsuit against Heritage Audio before the competent Court in United Kingdom concerning an infringement claim arising from the alleged wrongful use of rights conferred by an EU trade mark and two national trademarks. AMS Neve is exclusive licensee over the concerned marks.…
The exhaustion of rights and big monopolies - requirements to undetermine the economic link and the worldwide brand image. Schweppes as exclusive licensee in Spain.
Background of the case The trademark Schweppes has its origin in United Kingdom. Initially it was registered in the name of Cadbury Schweppes (owner back in time of all the SCHWEPPES´s trademarks in all countries conforming the European Economic Area). Afterwards, Cadbury sold to Coca Cola in some territories of the EU the ownership keeping among others, Spain. Cadbury Schweppes merged into the French company Pernord Ricard, creating a new entity named Orangina Schweppes Group. This company was…
Prior right not registered - evidence of use of more than mere local significance (article 8.4 of the Regulation 2017/1001)
Background of the case The appellant, SWEMAC Innovation AB, filed an EUTM application on October 2, 2007, for the word mark SWEMAC in Class 10 and 42. The trademark was duly registered on September 4, 2003. On September 3, 2013, SWEMAC Medical Appliances AB filed a partial nullity action pursuant to Article 60.1, c) of Regulation 2017/1001. The claim was relied on the Swedish company name SWEMAC Medical Appliances AB, registered as a business as from December 12, 2007. The applicant argued that…
Café del mar - nullity based on bad faith.
Background of the case In 1978, the appellant and the interveners in the current legal proceedings, obtained a premise in Ibiza as to start a business (bar) in this same place named “Café del Mar”. In 1992, the intervener applied for the trademark registration for the first time Café del Mar. Afterwards, both parties created the legal entity and the intervener was named as Proxy-Holder as to act in the name and in representation of the legal entity. Among others, in 1999 he applied for an EUTM…
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…
Marca anterior registrada con una declaración de renuncia. Efectos de la renuncia sobre el alcance de la protección de la marca anterior.
Antecedentes: En el año 2007, la sociedad sueca Norrtelje Brenneri Aktiebolag registró, para bebidas alcohólicas de la clase 33 del Arreglo de Niza como marca nacional el signo denominativo y figurativo siguiente (en lo sucesivo, «marca anterior»): Dicho registro está acompañado de una declaración de renuncia por la que se establece que el «registro no confiere un derecho exclusivo sobre el vocablo “RoslagsPunsch”». La inscripción de dicha declaración fue exigida por la Oficina de Registro…
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…