The 8th Section of the Alicante Court of Appeal, acting as the EU Trademark Court of Appeal, recently confirmed that the use of third-party trademarks of reputed perfumes to advertise, offer and market so-called 'smell-alike' perfumes amounts to trademark infringement and unfair competition. Notably, the defendant's argument was based on the need to use the trademarks of other perfumes to inform consumers about the fragrance of its smell-alike perfumes.
The EU Trademark Court recently revoked in full the Commercial Court of Alicante Number 1 first-instance judgment, which had dismissed all of the claims filed by H-D USA, LLC (Harley-Davidson) against a third party for its unauthorised use of the Harley-Davidson bar and shield sign to identify and promote its bar restaurant. The court sentenced the defendant to pay Harley-Davidson damages and bear the costs incurred in the first instance.
EU Trademark Court Number 2 of Alicante recently upheld the lawsuit filed against Equivalenza for its use of trademarks belonging to Hugo Boss, Gucci and Lacoste in its sale of alleged smell-alike perfumes. Despite an earlier conviction for third-party trademark use, Equivalenza did not change its business model. Consequently, the court ordered it to cease and desist offering, marketing and promoting its perfumes using the plaintiffs' trademarks, among other things.
The issue of intermediary liability is a hot topic, particularly in the online environment, with decisions in Tommy Hilfiger and McFadden only intensifying the debate. European Court of Justice case law in this regard clarifies that any intermediary whose services are used by a third party to infringe an IP right can be ordered to take measures to end the infringement and prevent further infringements.
The EU Trademark Court Number 2 of Alicante recently upheld a lawsuit against Yodeyma Parfums SL for offering and marketing smell-alike perfumes identified by using comparison lists containing the plaintiffs' well-known trademarks. This decision is clearly in line with the findings of the EU Trademark Courts Number 1 and 2 and the EU Trademark Court of Appeal.
The English Cut, SL filed an application for the registration of the EU word mark THE ENGLISH CUT. El Corte Inglés, SA filed an opposition based on the Spanish word mark EL CORTE INGLÉS and two EU figurative marks. The EU General Court recently confirmed the EU Intellectual Property Office First Board of Appeal's decision to grant the registration. This resolution is worthwhile, as few EU General Court decisions consider Article 8(5) of the EU Trademark Regulation.
Brexit's impact on trademark protection has lead to heated discussions regarding its effect on future business. As many companies have a keen interest in protecting their trademarks in the European Union, and thus also in the United Kingdom, Brexit has caused much uncertainty regarding the extent of future EU trademark protection. The need to change trademark strategy is a key concern.
The General Court was recently asked to annul a decision of the EU Intellectual Property Office which had revoked an EU trademark on the grounds that the evidence provided could not establish genuine use. As part of the appeal, additional evidence was submitted, but the court held it to be inadmissible, as it had not been filed before the case came to court. If evidence is not filed with the board of appeal, registration may be cancelled.