On 17 May 2017, the Swedish Patent and Market Court (the “PMD”) decided a case whereby it held that Nestlé’s expansion of its cat food brand “PURINA felix” into Sweden infringed the reputed Swedish foodstuff trademark FELIX, and that the fact that PURINA felix was previously used and enjoyed recognition in another EU country did not…

Two months ago I reported about the Draft of a new Trademark Act (Markenrechtsmodernisierungsgesetz) which was supposed to enter into force before the election for the next German Bundestag. Some of the relevant German associations commented in detail on the draft and proposed some well-grounded changes – i.e. the Markenverband, the GRUR, and the Bundesverband Deutscher…

In a decision of June 2, 2016 Svea Court of Appeal found Mars’ popular product “m&m’s” infringing Kraft Foods Sverige Intellectual Property AB’s non-registered trademark “m” in relation to candy and chocolates. Mars’ sales of products bearing the trademarks “m” and “m&m’s” were therefore prohibited in Sweden under the penalty of a fine of SEK…

CJEU: reimbursement of legal costs in IP infringement proceedings must not be disproportionate or even insignificant On 28 July 2016, the CJEU ruled in a case concerning the reimbursement of legal costs in a patent infringement action in Belgium (United Video Properties Inc. v. Telenet NV, C‑57/15). It declared that a flat fee reimbursement system,…

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…

The facts of the case litigated between Gulf Oil Benelux and Milan Vondal before the Prague High Courts prima facie appear to be a typical scenario of a domain name dispute. Yet, the owner of an earlier word mark failed to recover the domain name gulf.cz from his former exclusive distributor despite the domain name…

The Higher District Court of Düsseldorf had to decide whether the parallel importer of medical devices also had to provide the trademark owner at its request with a specimen of the re-labelled product. In its detailed decision of 12 April 2016 on case I-20 U 48/15 the court held that medical devices were rather more…

The Austrian Supreme Court (short “the Court”) denied a motion for a preliminary injunction (short “PI”) against the use of the mark “Duff (BEER)” based on the Claimant’s EUTM “Duff”, since the EUTM could be declared invalid on the basis of Defendant’s earlier German trademark rights (decision of 27.01.2016, 4 Ob 183/15p  – DUFF Beer)….

In the Stockholm District Court judgment of March 22, 2016, the UK company Textilis, Ltd (‘Textilis’) was found infringing, amongst others, the Swedish company Svenskt Tenn Aktiebolag’s (‘Svenskt Tenn’) figurative EUTM ‘Manhattan’ (shown below). The case concerned two questions, namely whether (a) there was infringement in Sweden and (b) the trade mark is valid. This case relates…

The UK Court of Appeal recently upheld the High Court’s decision that the use of ‘glee’ by Twentieth Century Fox (‘Fox’) as the name of its comedy TV series infringed an earlier trade mark registration for THE GLEE CLUB. So called ‘wrong way round’ confusion played a central role in this. The claimant (and respondent…