On 29 July 2019, the Court of Justice of the European Union (CJEU) held​ that Red Bull’s signature blue and silver colour trademarks were invalid. This followed an earlier decision by the General Court of the European Union in 2017 which found that the graphic representation and description of the two colours were not sufficiently precise.

The threshold for successfully registering a trademark consisting of a single colour or combination of colours has been set purposefully high, in order to avoid situations where a large company is able to effectively monopolise a particular colour within a particular class of goods or services. A company seeking to register a colour trademark must demonstrate that their mark has acquired distinctiveness, and be able to describe it in a sufficiently clear and precise manner.Continue Reading European Court declares Red Bull’s colour trademarks invalid

In 2013, Mr Justice Gilligan refused an injunction sought by Galway Free Range Eggs Limited restraining Hillsbrook Eggs Limited from packaging or promoting their products under the name “O’Brien’s of Galway Free Range Eggs”. The Court held that it was not satisfied that the packaging used by the defendant was likely to deceive the public but did accept that there were issues to put forward to trial.

The substantive High Court hearing was held recently before Mr Justice Tony O’Connor and one of the bigger issues before the Court was the use of survey evidence and the weight to be attached to such opinion evidence.  The Court was highly sceptical of the value of market opinions and related questionnaires and stated that in this specific case “the evidence offered on behalf of the plaintiff concerning brand confusion was tenuous and unreliable”.

Continue Reading High Court finds brand survey evidence unreliable

New Balance has kicked off a trademark action against Nike-owned Converse concerning its PF Flyers brand and the Converse trademark on Chuck Taylors. New Balance is requesting that the Federal Court in NY cancel the Converse trademark registration, which was obtained in 2013, so that they may continue selling their version of the shoe. New Balance has set out in court filed papers that the products are different enough and that consumers are unlikely to confuse the two. 

Last October saw Converse file a trademark action against 31 companies, notably not including New Balance, who they accused of infringing their trademark by producing knock-offs of their famous Chuck Taylor designed shoe. Should Converse be successful in this action New Balance has indicated their concern as to how such a ruling would be enforced.Continue Reading New Balance trademark action against Converse

Italian publishing company Arnoldo Mondadori Editore SpA has had an appeal dismissed by the General Court in opposition proceedings brought against the registration of the mark GRAZIA.  In 2008, Grazia Equity GmbH sought to register a community trade mark in respect of the word sign GRAZIA under Classes 35 and 36 of the Nice Classification (business consultancy and financial services). 

Mondadori filed an opposition based on an earlier mark for GRAZIA under Classes 3, 9, 16, 18, 25 and 38.  In rejecting the opposition, the Opposition Division of OHIM said that there was no likelihood of confusion as the goods and services concerned were not similar.  Mondadori argued before the OHIM Fourth Board of Appeal that an overall assessment of the likelihood of confusion should have been considered, such as the fact that the mark was well known to the relevant public and that Article 8(5) of the Community Trademark Regulation 207/2009 should apply.  Mondadori filed a further appeal at the General Court when that argument was rejected and unfounded.Continue Reading No confusion between GRAZIA marks

The ALS Association has filed two trademark applications with the US Patent and Trademark Office for "ice bucket challenge" and "ALS ice bucket challenge" for the purposes of charitable fundraising.   In recent weeks there has been a social media storm of people carrying out the challenge by pouring a bucket of iced water over their heads and making a donation to the ALS Association.

The ALS Association are claiming ownership of the phrases, despite not creating the idea. Permission from the original creators was given to the ALS Association prior to the registrations being made. Other charitable organisations

Continue Reading Ice Bucket “Challenge”

A US based Irish pottery designer, trading as Kara Irish Pottery, has initiated proceedings in Massachusetts against Belleek Pottery and it US subsidiary claiming infringement of her designs. Kara Irish Pottery, with offices in Derry City and Boston, is claiming that Belleek Pottery has been "palming off" its products as its own despite allegedly using Kara Irish Pottery designs. 

In court documents filed in late December, the plaintiff claims that her trademarked designs on her pottery reflect "unique and distinctive element of Celtic art and culture". Continue Reading Irish pottery designs subject of US proceedings