Joined Cases C-14821 and C-184/21: On 22 December 2022, the Court published its judgment in these cases arising from referrals from the courts in Belgium and Luxembourg. The cases were brought by Louboutin concerning infringement of its red-sole trade mark (pictured) and concerned the question whether the display of third-party infringements in an online marketplace such as Amazon constituted use of the trade mark by the marketplace. The Court held that the marketplace can be held liable for the infringement, where the average consumer believes that the platform is acting on its own behalf and account, taking into account factors such as uniform presentation of all offers, additional services provided, customer care and labelling of offers. Read further analysis in this post on the Class 46 blog.
Case T-320/22 (only available in French and Swedish): The Court upheld a Board of Appeal decision that the EUTM application pictured (filed by Scania for goods in classes 7, 9 and 12) was descriptive and had not acquired distinctive character through use. The applicant had submitted evidence comprising market surveys, market share figures and sales figures to demonstrate acquired distinctiveness, but the Court agreed with the Board that these were either irrelevant or not sufficiently extensive.
Case T-726/21: Rolex lost a challenge to a Board of Appeal finding that there was no likelihood of confusion under Article 8(1)(b) and no injury to reputation under Article 8(5). The case arose from an International Registration designating the European Union filed by PWT A/S for “clothing, footwear, headgear” in class 25 (pictured left). Rolex opposed the registration based on its earlier figurative marks (pictured right) for goods including “watches” in class 14.
Case T-528/21: The filing of EU trade mark applications with “the dishonest intention of hollowing out earlier national trade mark rights”, prior to any creditors’ claim, amounted to bad faith, said the Court in a dispute over an the registration of various figurative marks as well as word marks comprising MORFAT and ELLO. The case arose from invalidity proceedings brought by three creditor banks.
Case T-129/22: There was no likelihood of confusion between these signs for different goods, the Court said – upholding a decision by the Board of Appeal. The EUTM application was for “Gymnastic and sporting articles” in class 28, while the earlier marks on which the opposition was based were for games and toys in class 28. The judgment includes a discussion of Article 8(4) of the EUTM Regulation, regarding earlier unregistered trade mark rights, and paragraph 5 of the Markengesetz.
 |  |
Case T-44/22: The Court upheld Philip Morris’s Article 8(5) opposition to the registration of an IR for identical goods/services in class 34, saying there was a link between the signs and a risk of unfair advantage. The Court said that the trade mark applicant’s evidence from outside the EU was irrelevant and added: “The applicant has not adduced any evidence as to how its mark has been accepted by consumers in the European Union. The applicant merely produced certificates of registration of its trade mark in Sweden and Croatia, without, however, showing, by additional arguments or evidence, how the relevant public perceived that trade mark in those countries or how it was used there.”
 |  |
Case T-4/22: Puma failed in its bid to overturn a Board of Appeal decision rejecting its article 8(5) opposition to the registration of an EUTM for PUMA (figurative) in class 7. The Court said the Board was “entitled to take the view that ... notwithstanding the strength of the earlier mark’s reputation, its highly distinctive character and the degree of similarity between the signs at issue, a connection would not be made between the marks at issue.”
Case T-777/21: The Court upheld a finding that the EUTM pictured was descriptive for “Containers, jars, boxes, heat-insulated containers for food and drink; glass products: bottles, containers, jars, jugs, boxes, dishes, vases, flower pots; glasses, wine/spirit glasses, drinkware & bar accessories; glass carafes; other glass products; heat-resistant glassware” in class 21.
Issue 145
MARQUES Council and Team members can now book their places at the Spring Team Meeting, which takes place at the Hilton Hotel, Frankfurt on Thursday 2 and Friday 3 March
MARQUES has been involved in the debate on the reform of the European Union Design legislation since its inception, following the publication of the Legal Review on Industrial Designs Protection in Europe in 2016
The Ideas Powered SME Fund 2023 was opened on 23 January and will run until 15 December 2023
Representatives of SMEs can now apply for the WIPO 2023 Global Awards
On 13 January this year, the China National Intellectual Property Administration (CNIPA) issued a notification on soliciting public opinions regarding the draft revision to the China Trademark Law
It has been a busy month on the MARQUES blogs, with reports from MARQUES members on various legislative developments and judgments