LVM the owner of luxury brands, and registered trademarks including Louis Vuitton sued parties that hosted sites selling goods using their registered tademarks. The case established that ISPs can carry a considerable commercial responsility, especially if registered trademarks are infringed by any site that they host. They can be held liable for damages when they host websites involving sales or promotion of goods that abuse registered trademarks or that supply counterfeit goods, without the permission of the owner of the registered trademarks.

A jury held that the parties, including the hosting service providers were liable for over €30million in damages.

A feature of a registered trademark is that it cannot be used without the owner's permission to sell competing goods/services. If the hosting entity had shut down the counterfeitors, or ceased to host their site, this would probably have reduced the damages. For more registered trademarks cases information visit our blog site on trademarks.

American Clothing Associates, domiciled in Belgium, applied to register a community trademark covering the EU, with a sign that contained a maple leaf above the letters RW. Initially, OHIM refused to register the trademark because it resembled the national emblem of Canada.

One of the corner-stones of laws on trademarks is the Paris Convention on Industrial Property 1883. Article 6ter prohibits the registration of state flags.

A lower court decision was appealed by both parties to the European Court of Justice, ECJ. American Clothing sought to have the mark registered in relation to the services in its application, since the Paris Convention referred to goods. However, the ECJ held that the Community trademarks regulations applied to both goods and services.

Article 6ter leaves the extension of the protection guaranteed to trade marks for goods to service marks to the discretion of the States party to the Convention.

Accordingly, the ECJ held that Article 7(1)(i) CTMR applies without distinction to trade marks for goods and service marks, so that registration could be refused, for example, to a service mark containing a badge.

The application to register a trademark resembling the Canadian flag was refused.

Danone, the large French dairy group was seeking damages from Glanbia from use of the Yoplait Essence brand name for yogurt. Danone contended it used Essensis as a trademark for yogurt between 1998 and 2004 - selling 72 mllion pots of Total Activia Bifidus Essensis. ESSENSIS is a registered trademark in Ireland.

Danone sought to block the registration of Glanbia's Yoplait ESSENCE brand, and pursued a legal action for infringement of its registered trademark in Ireland.

A feature of a registered trademark is that it must be used within 5 years. Glanbia contends that the Essensis brand was not put to genuine use in Ireland. Glanbia also contends it would be inconceivable that an Irish consumer would purchase a Yoplait yogurt brand item thinking it was made by Danone.

Initially, the High Court found in favour of Glanbia, and proposed to revoke the registration of the ESSENSIS trademark, on grounds of non-use and for being applicable to an ingredient as opposed to yoghurt. Danone appealed the decision on non-use and on trademark revocation to the Supreme Court. The Supreme Court over-ruled the High Court's judgement on revocation of the trademark, as being interpreted on a unduly narrow interpretation of the law.

To keep a registered trademark valid indefinitely, renewal fees are payable every 10 years. When a trademark is registered, it is important to ensure trademark registration fees are paid on time. This proved to be a key matter when TESCO STORES LTD. was opposing the registration of the trademark METRO for a German cash and carry/supermarket group, as a Community Trade Mark. Tesco held a registered trademark for METRO in the UK, and filed an opposition to the registration of METRO as a Community trademark.

Tesco sought to block the registration of METRO.

A feature of a Community trademark is that if it falls in one member state, then the trademark registration cannot be upheld throughout the EU, so if TESCO successfully opposed the METRO CTM, through its prior registered trademark in the UK, it could block the application for trademark registration in the EU.

The trademark opposition was appealed in the European courts. On examination, it appeared that TESCO did not provide evidence that its registered trademark in the UK was renewed during the period when the proceedings were being contested. As a result it was held that the TESCO registered trademark was not effectively valid at that point in time, and it was possible for the Community trademark to be registered.

The applicant succeeded in obtaining a registered trademark, when an opponent did not provide evidence that its registered trademark had been renewed through evidence of payment of renewal fees for its registered trademark.

If TESCO had produced evidence of payment of its renewal fees, it could have successfully blocked the Community trademark registration. [13 September 2006]

When a trademark is registered, the Trade Marks Act requires that the registered trademark must be used within 5 years of trademark registration, or alternatively, the trademark registration can be revoked if any such use has been suspended for an uninterrupted period of 5 years.

The Professional Golfers' Association (PGA) sought to revoke a registered trademark (LPGA) held by the Ladies Professional Golf Association.The LPGA's registered trademark was held in respect of golf bags, golf clubs and golf balls.

While the LPGA had entered into a licence agreement for the use of the registered trademark, the evidence of the agreement was not produced, and evidence of the level of sales was scant. As a result it was held that the LPGA registered trademark could not be maintained, and its status as a registered trademark was revoked.

Holders of registered trade-marks have an established property right. In some ways this is more powerful than owning a property in say Dublin, because the registered trade-mark property right extends across the State, and infringement is regarded as a serious matter by the courts.

Independent News and Media sought to publish a freesheet called "Herald Metro". Metro was a registered trademark held by a competitor, and its owners sought to injunct Independent Newspapers to stop them using Metro in the title, thereby potentially infringing its registered trademark.

The Metro freesheet is a joint venture involving the Irish Times, Associated Newspapers and Metro International.

The High Court decided that there was a likelihood of confusion, and therefore that the property right contained in the registered trademark, Metro, for similar goods and services, may be infringed by the publication of a new newspaper freesheet titled Herald Metro.

Accordingly, it stopped Independent News and Media from using Metro in its title (by granting an injunction to holders of the registered trademark). Subsequently, Independent proceeded to launch its freesheet with the name Herald AM, and Metro was also launched by the holders of the registered trademark.

Fortunegreen, the joint venture vehicle, succeeded in protecting the property right contained in the registered trademark, and blocked a competitor from using Metro. [7 October 2005].

Diageo acquired an option to buy Bushmills, the world’s second largest Irish whiskey brand, for €295m. The Bushmills price is based on 14 times its direct brand contribution (DBC) in 2004. [7 June 2005]

Market share and scale can mean that for competition reasons, selling off brands can be very attractive. Pernod Ricard bid €11bn for Allied Domecq – this would have left Pernod with two significant whiskey brands, Jameson and Bushmills.

Heinz bought HP Sauce, Lea and Perrins Worcester Sauce and Rajah’s spices to add to Heinz’s famous 57 original varieties. Danone also granted Heinz a license to make the Amoy brand of sauces in Europe as part of the deal. [20 June 2005].

Defendant used plastic container similar to the “Jif” lemon shaped juice container. Registration of shapes as trademarks is allowed.

The courts restrained the defendants from using the container.

The trademark KODAK was being applied to bicycles.

The courts stopped use of the name KODAK for bicycles because the trade in cameras and bicycles were similar.

An application was made to register the name VISA as a registered trademark for condoms.

The VISA mark for credit cards was upheld because the use of VISA on condoms would be detrimental to the distinctive VISA trade mark.

Legislation allows registration of shapes or packaging to be registered as trademarks.

New legislation was passed in the UK in 1994 allowing registration of shapes. The shape of the Coca Cola bottle is now a registered trademark.

Spalding manufactured “Orb” footballs. Their mark was applied to two types of ball, and the inferior type was sold to waste rubber merchants. The defendant bought the inferior balls and sold them implying they were the higher quality type.

The courts held that the plaintiffs had established a quality reputation for Orb footballs.