Included in this issue: Commonality of trade mark has Birkenstock on the back foot; Buyer's Dream turned Buyer's Nightmare – the dangers of disregarding IP; Learning the lessons of publishing photographs on the internet without consent  and more...


Commonality of trade mark has Birkenstock on the back foot

  • Birkenstock unsuccessful in registering its shoe sole pattern as a trade mark  
  • Appeal to the Court of Justice of the European Union
  • What is the test for determining whether a sign comprising a repeating motif lacks distinctive character?

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Buyer's Dream turned Buyer's Nightmare – the dangers of disregarding IP

  • Individual creates IP while providing services to a company
  • for tax reasons, the services are provided under a personal service company arrangement
  • should the individual be considered an employee for IP law purposes?

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Learning the lessons of publishing photographs on the internet without consent

  • School pupil uses a photo from the internet as part of a school project 
  • School chooses to publish the pupil's report on its website
  • CJEU interprets the scope of 'communication to the public' in the context of the posting on one website of a photograph previously posted, without any restrictions, on another website. 

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Court of Appeal hears healthy debate about construction of exclusive licence agreement

  • Licence agreement gives licensee exclusive rights to use seven trade marks
  • Licensor validly terminates the licence as regards five of the trade marks, on the grounds of non-use 
  • Can the licensor use those five marks without breaching the exclusivity of the licence?

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Still no break for Nestlé in KitKat trade mark dispute 

  • Latest chapter in the long-running dispute concerning the validity of a 'four-fingered' three-dimensional trade mark
  • European Court of Justice dismisses appeals brought by Nestlé, the EUIPO and Mondelēz
  • What are the evidential requirements for demonstrating acquired distinctiveness?

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European court gives a "lift" to brand owners

  • Trader buys branded forklift trucks outside of the EEA, removes trade marks and adds its own distinctive signs
  • No suggestion of trader using marks that are the same or similar to the brand owner's marks
  • Does this amount to a breach of EU trade mark laws?

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Key contact

Emma Armitage

Emma Armitage

Partner, Dispute Resolution, Intellectual Property
London, UK

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