LEGO, JENSEN and UTZON have in-common that they all are trademarks and last names at the same time. A decade ago the reputed producer of construction toys for children LEGO tried to prohibit Louise Lego Andersen – painter and gallery owner – from e.g. signing her paintings as “L. Lego” (see ruling V 150/03). LEGO…

In a decision of 22 April 2016, the Spanish Supreme Court has clarified the circumstances in which the commercialization of original luxury products through Internet sale platforms outside a selective distribution system could be relied on by the trademark owner as precluding an exhaustion of the trademark rights. The plaintiffs, various companies of the L’Oréal…

A recent decision of the Federal Patent Court in Germany (Decision of 1 March 2016 on Case 29 W (pat) 33/13) shows that the unitary character of an EU trademark (EUTM) does not necessarily mean that it enjoys the same level of protection in all EU member states. In opposition proceedings in Germany, the Federal…

In one of its latest decisions (I ZR 50/14 of November 5, 2015 – ConText) the Bundesgerichtshof (Federal Court of Justice)  has ruled that the forfeiture of a claim requesting injunction relief due to an infringement of a company name by another company name has to be determined according to the general principles of forfeiture…

Last month saw an interesting case before the UK High Court in relation to a counterclaim to trade mark infringement for a declaration that the EUTM in question was invalid as the registration was neither a “sign” nor “capable of being represented graphically” within the meaning of Article 4 of Council Regulation (EC) 207/2009) (the…

On July 05, 2016, the General Court confirmed the decisions of the invalidity department and the Boards of Appeal of the EUIPO and decided that the EU word mark “NEUSCHWANSTEIN”, registered by the Free State of Bavaria for goods and services in various classes remains registered since the trademark neither consists exclusively of an indication…

Slep-Tone Entertainment Corp. and its successor in interest, Phoenix Entertainment Partners LLC (collectively, “Slep-Tone”), failed to plausibly allege consumer confusion in its trademark infringement and unfair competition claims against an Illinois pub and its owner, who allegedly made unauthorized copies of Slep-Tone’s karaoke files and passed them off as genuine Slep-Tone tracks, the U.S. Court…

According to a recent decision of the Italian Supreme Court, it is no longer possible for an original name ‘proprietor’ to use his or her  personal name as a distinctive sign once it has been validly registered as a word mark and has acquired a reputation if it has been validly transferred to a third…