Case C-425/16, Raimund – mulling over infringement before invalidity in trade mark procedural law [judgment 2017, ECLI:EU:C:2017:776]
By judgment of 19 October 2017 (ECLI:EU:C:2017:776) the Court ruled, in the words of the operative part: “1.
Tag
trade mark
34 case reports
Case C-395/16, DOCERAM – they DoCeram-ics but technical functionality dictates their design [judgment 2018, ECLI:EU:C:2018:172]
By judgment of 8 March 2018 (ECLI:EU:C:2018:172) the Court ruled, in the words of the operative part: “1.
Case C-341/16, Hanssen Beleggingen – exclusive court jurisdiction in trade mark validity proceedings [judgment 2017, ECLI:EU:C:2017:738]
By judgment of 5 October 2017 (ECLI:EU:C:2017:738) the Court ruled, in the words of the operative part: “Article 22(4) of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and…
Case C-230/16, Coty Germany – trade mark selective distributorship agreements and hardcore restrictions on competition [judgment 2017, ECLI:EU:C:2017:941]
On 6 December 2017 the Court ruled (ECLI:EU:C:2017:941) that a selective distribution system for luxury goods designed to preserve their prestige image is compatible with Article 101(1) TFEU, and that a clause prohibiting authorised retailers from selling…
Case C-163/16, Louboutin – shoe soles, signs solely comprising a shape, and judicial cobblers [judgment 2018, ECLI:EU:C:2018:423]
On 12 June 2018 the Court ruled (ECLI:EU:C:2018:423) that a mark consisting of a colour applied to the sole of a shoe is not a sign consisting "exclusively of the shape" within Article 3(1)(e)(iii) of the Trade Marks Directive — the red sole is principally…
Case C-169/15, Montis Design – EU copyright and Benelux design formalities, a game of musical chairs? [judgment 2016, ECLI:EU:C:2016:790]
By judgment of 20 October 2016 (ECLI:EU:C:2016:790) the Court held that the terms of protection in the Term Directive do not apply to copyright that had been extinguished before 1 July 1995, and that EU law does not preclude national legislation under…
Case C-654/15, Länsförsäkringar – no genuine use of a Community trade mark [judgment 2016, ECLI:EU:C:2016:998]
By judgment of 21 December 2016 (ECLI:EU:C:2016:998) the Court held that during the five-year grace period after registration the proprietor of an EU trade mark may rely on Article 9(1)(b) against a similar sign for identical or similar goods without…
Case C-24/16, Nintendo – jurisdiction by design [judgment 2017, ECLI:EU:C:2017:724]
On 27 September 2017 the Court ruled (ECLI:EU:C:2017:724) that where co-defendants in different Member States are sued over the same supply chain, a Community-design court can grant remedies with EU-wide effect against both.
Case C-617/15, Hummel Holding – international jurisdiction and Community trade mark law [judgment 2017, ECLI:EU:C:2017:390]
By judgment of 18 May 2017 (ECLI:EU:C:2017:390) the Court held that a legally distinct second-tier subsidiary with a seat in a Member State is an "establishment" of its non-EU parent for Article 97(1) of the Community Trade Mark Regulation where it is a…
Case C-494/15, Tommy Hilfiger – imposing online market rules onto market lessors [judgment 2016, ECLI:EU:C:2016:528]
On 7 July 2016 the Court ruled (ECLI:EU:C:2016:528) that the operator of a physical marketplace which sublets pitches to traders selling counterfeits is an "intermediary" under Article 11 of the Enforcement Directive, and injunctions against it are subject…
Case C-297/15, Ferring Lægemidler – artificially segmenting the market in laxatives? [judgment 2016, ECLI:EU:C:2016:857]
By judgment of 10 November 2016 (ECLI:EU:C:2016:857) the Court ruled, in the words of the operative part: “Article 7(2) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States…
Case C-379/14, TOP Logistics – from lex mercatoria to lex markatoria? [judgment 2015, ECLI:EU:C:2015:497]
By judgment of 16 July 2015 (ECLI:EU:C:2015:497) the Court ruled, in the words of the operative part: “Article 5 of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be…
Case C-215/14, Nestlé – getting into the groove with three-dimensional trade marks [judgment 2015, ECLI:EU:C:2015:604]
By judgment of 16 September 2015 (ECLI:EU:C:2015:604) the Court held that to register a shape on acquired distinctiveness the applicant must prove that the relevant public identifies origin by that mark alone — not by it in combination with other marks on…
Case C-147/14, Loutfi – Arabic words in Arabic and Latin scripts under EU trade mark law [judgment 2015, ECLI:EU:C:2015:420]
By judgment of 25 June 2015 (ECLI:EU:C:2015:420) the Court held that where an EU trade mark and a contested sign contain a dominant Arabic word in both Latin and Arabic script, and the relevant public has a basic knowledge of written Arabic, the meaning…
Case C-20/14, BGW Marketing- & Management-Service – a trade marked dominant sequence of letters [judgment 2015, ECLI:EU:C:2015:714]
By judgment of 22 October 2015 (ECLI:EU:C:2015:714) the Court ruled, in the words of the operative part: “Article 4(1)(b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States…
Case C-681/13, Diageo Brands – spiriting away bad judgments with public policy [judgment 2015, ECLI:EU:C:2015:471]
By judgment of 16 July 2015 (ECLI:EU:C:2015:471) the Court held that an alleged misapplication of EU trade-mark law by a court of the Member State of origin does not engage the public-policy refusal ground of Article 34(1) of Brussels I: recognition may be…
Case C-580/13, Coty Germany – does fake toilet water flush bank confidentiality down the pan? [judgment 2015, ECLI:EU:C:2015:485]
By judgment of 16 July 2015 (ECLI:EU:C:2015:485) the Court ruled, in the words of the operative part: “Article 8(3)(e) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights…
Case C-420/13, Netto Marken Discount – trade mark protection for retailers trading in services? [judgment 2014, ECLI:EU:C:2014:2069]
By judgment of 10 July 2014 (ECLI:EU:C:2014:2069) the Court ruled, in the words of the operative part: “1.
Case C-421/13, Apple – seeking trade mark protection for the layout and design of a retail store [judgment 2014, ECLI:EU:C:2014:2070]
By judgment of 10 July 2014 (ECLI:EU:C:2014:2070) the Court held that the representation of a retail store's layout, by a design alone without size indications, may be registered as a trade mark for services consisting of offerings related to the goods…
Case C-419/13, Art & Allposters International – from paper art poster to canvas picture [judgment 2015, ECLI:EU:C:2015:27]
On 22 January 2015 the Court ruled (ECLI:EU:C:2015:27) that distribution-right exhaustion applies only to the tangible object placed on the market with the rightholder's consent — transferring the ink of a lawfully bought paper poster onto canvas creates a…
Case C-98/13, Martin Blomqvist – deliberately purchasing a fake Rolex from China [judgment 2014, ECLI:EU:C:2014:55]
By judgment of 6 February 2014 (ECLI:EU:C:2014:55) the Court held that customs may seize a counterfeit watch bought by an EU resident from a non-EU online shop: the sale itself constitutes "distribution to the public" and "use in the course of trade", with…
Case C-205/13, Hauck – the evolving shape of trade mark law [judgment 2014, ECLI:EU:C:2014:2233]
On 18 September 2014 the Court ruled (ECLI:EU:C:2014:2233) on the Tripp Trapp chair that the "nature of the goods" exclusion covers shapes with essential characteristics inherent to the generic function of the product, and the "substantial value" exclusion…
Case C-201/13, Johan Deckmyn – parody in EU law [judgment 2014, ECLI:EU:C:2014:2132]
On 3 September 2014 the Grand Chamber ruled (ECLI:EU:C:2014:2132) that parody is an autonomous concept of EU law with only two essential characteristics: it evokes an existing work while being noticeably different from it, and it constitutes an expression…
Case C-217/13, Oberbank – seeing trade marked red in financial affairs [judgment 2014, ECLI:EU:C:2014:2012]
By judgment of 19 June 2014 (ECLI:EU:C:2014:2012) the Court ruled, in the words of the operative part: “1.
Case C-12/12, Colloseum Holding – red flagging jeans, use and composite marks in trade mark law [judgment 2013, ECLI:EU:C:2013:253]
By judgment of 18 April 2013 (ECLI:EU:C:2013:253) the Court ruled, in the words of the operative part: “The condition of genuine use of a trade mark, within the meaning of Article 15(1) of Council Regulation (EC) No 40/94 of 20 December 1993 on the…
Case C-583/12, Sintax Trading – who decides whether imported goods infringe design rights? [judgment 2014, ECLI:EU:C:2014:244]
On 9 April 2014 the Court ruled (ECLI:EU:C:2014:244) that Regulation 1383/2003 does not preclude customs authorities themselves, absent any initiative by the rightholder, from initiating and conducting the proceedings to determine whether detained goods…
Case C-409/12, Backaldrin Österreich The Kornspitz Company – when the name of a bread roll is common for consumers but uncommon for traders [judgment 2014, ECLI:EU:C:2014:130]
By judgment of 6 March 2014 (ECLI:EU:C:2014:130) the Court held that a trade mark may be revoked where it has become the common name of the product for end users alone, even if sellers remain aware of its origin — and that an owner's failure to encourage…
Case C-360/12, Coty Prestige Lancaster Group – jurisdiction and participation in trade mark infringement [judgment 2014, ECLI:EU:C:2014:1318]
On 5 June 2014 the Court ruled (ECLI:EU:C:2014:1318) that jurisdiction under Article 93(5) of the Community Trade Mark Regulation lies only in the Member State where the defendant itself committed the alleged infringement, and cannot be founded on another…
Case C-320/12, Malaysia Dairy Industries – an EU definition of trade mark bad faith? [judgment 2013, ECLI:EU:C:2013:435]
By judgment of 27 June 2013 (ECLI:EU:C:2013:435) the Court ruled, in the words of the operative part: “1.
Case C-299/12, Green-Swan Pharmaceuticals – a forbidden health claim benefiting from a transitional exception? [judgment 2013, ECLI:EU:C:2013:501]
By judgment of 18 July 2013 (ECLI:EU:C:2013:501) the Court ruled, in the words of the operative part: “1.
Case C-252/12, Specsavers – seeing trade marks green with envy? [judgment 2013, ECLI:EU:C:2013:497]
By judgment of 18 July 2013 (ECLI:EU:C:2013:497) the Court ruled, in the words of the operative part: “1.
Case C-65/12, Leidseplein Beheer – trade mark elements of Bull, due cause, and prior use in good faith [judgment 2014, ECLI:EU:C:2014:49]
On 6 February 2014 the Court ruled (ECLI:EU:C:2014:49) in Red Bull v De Vries that "due cause" under Article 5(2) of the Trade Marks Directive can cover a third party's use of a similar sign that was already being used in good faith for identical goods…
Case C-2/12, Trianon Productie – trade marks and 3D shapes
Can the particular shape of a chocolate stick be protected under the EU Trade Mark Directive 89/104? Facts Both the claimant and defendant companies make chocolate-sticks. In 1998 the defendant French company, Revillon, began making theirs in the form of ‘un sarment de vigne’ – a vine-shoot. The…
Case C-657/11, Belgian Electronic Sorting Technology – does a domain name advertise? [judgment 2013, ECLI:EU:C:2013:516]
On 11 July 2013 the Court ruled (ECLI:EU:C:2013:516) that "advertising" in the Misleading and Comparative Advertising Directive covers the use of a competitor-referencing domain name and of metatags invisible to the eye but read by search engines — while…