Case law

Thomas Hvammen Nicholson (Protector IPC)

Norway: Supreme Court finds that after sales use may damage functions of a trade mark

March 2, 2018

In a decision of 17 January 2018 (HR-2018-110-A), the Norwegian Supreme Court concludes that trade mark protection covers instances where there is a clear possibility that damage to the functions of…

Bettina Clefsen (b/cl IP)

Germany: Preliminary injunctions – The infringer has to do more than just stop using

February 28, 2018

In yet another decision, the German Federal Supreme Court (BGH) has ruled on whether an injunction also obliged an infringer to take active steps to stop the distribution of infringing products…

Thomas Long (Wolters Kluwer Legal & Regulatory US)

Trademark case: Commodores Entertainment Corp. v. McClary, USA

January 31, 2018

When Thomas McClary, a former member of the rhythm and blues, funk, and soul music band, The Commodores, left the band in 1984, he left behind any common-law rights he had in the band’s trademarks,…

Cheryl Beise (Wolters Kluwer Legal & Regulatory US)

Trademark case: Rohn v. Viacom International Inc., USA

January 31, 2018

The federal district court in Grand Rapids, Michigan, did not err in determining that Viacom’s BUBBLE GUPPIES animated children’s television show on the Nickelodeon Network and related merchandise…

Kai Schmidt-Hern (Lubberger Lehment )

ECJ: The Judgement “Coty / Akzente” by the ECJ

January 16, 2018

On 6th December 2017, the ECJ issued its judgement in the matter Coty / Akzente. The judgement is essentially about three questions: 1) Does the luxurious nature of products or trademarks…

Erica Vaccarello (De Simone & Partners S.P.A.), Fabio Angelini (Bugnion S.p.A)

Beware of Michelangelo’s David. 500 years after its carving its slingshot may still hurt…

January 8, 2018

The Court of Florence last October 25, 2017 issued a decision prohibiting a travel agency to commercially use the image of Michelangelo’s David without the authorization of the “Galleria dell…

Lasse Skaarup Christensen (Gorrissen Federspiel)

Denmark: When is the use of a third party’s trademark necessary?

December 20, 2017

Already, back in 1983 the Danish Government decided to create a national debit card named ‘DanKort’. Today the DanKort is usually combined with a Visa card and functions as a credit card abroad. The…

Thomas Hvammen Nicholson (Protector IPC)

Norway: Is a (famous) work of art contrary to accepted principles of morality or public policy under Article 3 of the Trade Mark Directive, part 2?

November 17, 2017

This is a follow up to the blog post of 4 September, regarding Oslo Municipality’s attempt to obtain trade mark protection for the body of works of art of Norwegian artist Gustav Vigeland. The…

Linda O'Brien (Wolters Kluwer Legal & Regulatory US)

USA: San Diego Comic Convention v. Dan Farr Productions, United States Court of Appeals, Ninth Circuit, No. 17-72682, 26 October 2017

November 2, 2017

In San Diego Comic Convention’s trademark infringement case against the operator of a Utah comic book convention involving the trademark COMIC-CON, two orders entered by the federal district court in…