The Italian sports cars manufacturer Ferrari is on the way to lose its rights over the trademark Testarossa in Germany, which was been used in the past for one of its famous cars.
In the case at hand, the German company Autec AG filed an application for trademark Testarossa for bicycles. Against this application, an opposition was filed by Ferrari which in turn provoked a request for revocation of the mark based on alleged non-use of the mark for 5 consequence years.
According to the Court in Düsseldorf Ferrari failed to prove a genuine use of its trademark. All piece of evidence for after-sales and maintenance of the car was rejected because the used brand was only Ferrari.
Most likely the Italian company will appeal this decision.
IP Kat reports about an interesting case in Italy regarding trademark infringement.
The case concerns T-shirts bearing the image of the well-known Italian motorcycle VESPA but without using the mark itself.
In Italy a trademark infringement can be sanctioned under the Criminal law, according to which:
“1. Except in cases of joint liability covered by Article 473, anyone who introduces into the territory of the State, in order to make a profit, industrial products bearing trade marks or other distinctive signs, whether national or foreign, that are counterfeited or altered, is punished with imprisonment between 1 and 4 years, and a fine between EUR 3,500 and 35,000.
2. Except in cases of joint liability in the counterfeiting, alteration, introduction into the territory of the State, anyone who is in possession for the sale, starts selling or otherwise circulates, in order to make a profit, the products mentioned above sub paragraph 1 is punished with imprisonment up to 2 years and a fine up to EUR 20,000.
3. The delicts sub paragraphs 1 and 2 are punishable upon condition that internal laws, EU regulations and international conventions on the protection of intellectual and industrial property are observed.”
The defendant stated that there is a lack of infringement because the mark wasn’t been put on the T-shirts but only the motorcycle.
In contrast with this, however, the Supreme court ruled that there is an infringement because in this particular case the consumers are quite aware of this motorcycle and even without labelling a trademark on the T-shirts there is a possibility for a confusion regarding the origin of the good in question.
For more information here.
The General Court ruled in cases Cases T-565/15 and T-566/15, which concern an attempt for registration of a word mark MERLIN’S KINDERWELT and a figurative mark
for Class 41 “education and providing of training, entertainment and amusement games, sporting and cultural activities, providing children’s playgrounds and amusement parks, theatre productions, providing information on entertainment and education, entertainment or education club services, publication of books and text, other than publicity texts, correspondence courses, arranging and conducting conferences and seminars, organisation of exhibitions for cultural or educational purposes, organisation of shows, organisation of games and competitions (education or entertainment)“.
Against these marks an opposition was filed by the Italian company Ferrero based on earlier Italian trademarks KINDER for Classes 30 and 41.
In contrast with the Board of Appeal of EUIPO, the court considers the words MERLIN’S and KINDERWELT as non-descriptive and signs owing an average degree of distinctiveness. The main reason for that conclusion is that the relevant public in Italy will not perceive their meaning which is created through their connection in one phrase.
In addition to that, according to the court, there are no dominant element in the later marks which as a whole are visually and phonetically dissimilar. Moreover there is no conceptional similarity due to the lack of meaning for the relevant public.
Source: Marquess Class 46.
The European Court ruled in Case T‑135/14, Kicktipp GmbH v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) and Società Italiana Calzature Srl.
A German company filed application for an EU trademark Kicktipp for cloths etc.
Against this mark was filed an opposition from an Italian company based on an earlier mark Kickers for cloths too.
OHIM upheld the opposition, the decision about which was appealed. One of the argument for this was the fact that the Italian company submitted only renew application for its trademark without registration certificate.
According the Court this is not sufficient to prove existing rights. Rule 19 of EU Regulation 2868/95 (which covers opposition filings) requires providing “both the registration certificate and the renewal certificate”.
Moreover, according to the Court both marks in general are not similar to the extent to create consumer confusion.