Trademark case: Kroma Makeup EU LLC v. Boldface Licensing & Branding Inc., USA - Kluwer ...
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Trademark case: Kroma Makeup EU LLC v. Boldface Licensing & Branding Inc., USA Kluwer Trademark Blog April 19, 2019 Jody Coultas (CCH) Please refer to this post as: Jody Coultas, ‘Trademark case: Kroma Makeup EU LLC v. Boldface Licensing & Branding Inc., USA’, Kluwer Trademark Blog, April 19 2019, http://trademarkblog.kluweriplaw.com/2019/04/19/trademark-case-kroma-makeup- eu-llc-v-boldface-licensing-branding-inc-usa/ Kroma Makeup EU, LLC, a trademark licensee, lacked standing to assert trademark infringement claims against the Kardashian sisters and a U.S. beauty product seller, according to the U.S. Court of Appeals in Atlanta. Following a suit filed by the owner of the KROMA mark against the Kardashians and a beauty product manufacturer for infringement, Kroma also filed suit for infringement. Kroma was the licensee of the KROMA marks in the European market, and it alleged that the sales of allegedly infringing beauty products infringed its rights. A district court held that because Kroma EU was not the owner of the trademark at issue and did not have the right to sue infringers under the licensing agreement, it could not bring claims against the Kardashians or any other alleged infringer. The Eleventh Circuit agreed with that conclusion based on the plain language of the licensing agreement and affirmed the lower court’s decision (Kroma Makeup EU, LLC v. Boldface Licensing & Branding, Inc., April 1, 2019, Goldberg, R.). Case date: 01 April 2019 Case number: No. 17-14211 Court: United States Court of Appeals, Eleventh Circuit A full summary of this case has been published on Kluwer IP Law.
Argentina: adidas’ three-stripes go for more! Kluwer Trademark Blog April 19, 2019 Jody Coultas (CCH) Please refer to this post as: Jody Coultas, ‘Trademark case: Kroma Makeup EU LLC v. Boldface Licensing & Branding Inc., USA’, Kluwer Trademark Blog, April 19 2019, http://trademarkblog.kluweriplaw.com/2019/04/19/trademark-case-kroma-makeup- eu-llc-v-boldface-licensing-branding-inc-usa/ On 26 September 2018, Division II of the Federal Court of Appeals of the City of Buenos Aires issued a decision in “Re adidas AG v. Juan Carlos Chillemi SRL seeking discontinuance of use and damages” (File No. 5423/2010) confirming the decision of the trial court. adidas owns trademark registrations for the “three-stripes” design in numerous countries around the world, including Argentina. The three-stripes logo has been a company emblem since 1929, making the company instantly recognizable in the eyes of the consumer. A well-known local player in the footwear industry started marketing four-stripe designs which closely resembled the iconic adidas logo, simply adding their registered trademark “STONE”. adidas instituted court proceedings seeking that Chillemi be ordered to: stop using four stripes on its footwear, reimburse adidas for damages, publish the court decision and bear the litigations costs. Both the trial court and later the Court of Appeals admitted the complaint. In its decision, the Court of Appeals declared that the use of TWO, THREE or FOUR stripes by Chillemi could lead to direct and indirect confusion for consumers. The
Court also declared that, in addition to the stripes, Chillemi had almost completely imitated the adidas footwear. It disregarded the inclusion of the “STONE” trademark as a means of differentiating the products. Regarding damages, the Court of Appeals ruled that Chillemi had to pay damages to adidas amounting to ARS 2 million (approximately USD 50,000), one of the highest awards granted by Argentine courts, and ordered that Chillemi publish the court decision. The significance of this case lies mainly in the fact that it is the first time that an Argentine Court of Appeals has ruled on confusion between THREE stripes and TWO and FOUR stripes on the merits. Basically, the Court considered that there was prima facie evidence that the four-stripe design infringed the three-stripe trademark registration and ordered that Chillemi had to discontinue all four-stripe designs on its products. This has set an interesting precedent for adidas to seek further limitations on the use of four- and two-stripe designs in sports and casual footwear. Trademark case: Louis Vuitton Malletier S.A. v. My Other Bag Inc., USA Kluwer Trademark Blog April 19, 2019 Jody Coultas (CCH) Please refer to this post as: Jody Coultas, ‘Trademark case: Kroma Makeup EU LLC v. Boldface Licensing & Branding Inc., USA’, Kluwer Trademark Blog, April 19 2019, http://trademarkblog.kluweriplaw.com/2019/04/19/trademark-case-kroma-makeup- eu-llc-v-boldface-licensing-branding-inc-usa/
A seller of parody tote bags that prevailed on trademark infringement, dilution, and copyright infringement claims brought by Louis Vuitton was not entitled to recover attorney fees. Case date: 15 March 2019 Case number: No. 18-293-cv. Court: United States Court of Appeals, Second Circuit A full summary of this case has been published on Kluwer IP Law. India: Deceptive Similarity of Trademarks Kluwer Trademark Blog April 19, 2019 Jody Coultas (CCH) Please refer to this post as: Jody Coultas, ‘Trademark case: Kroma Makeup EU LLC v. Boldface Licensing & Branding Inc., USA’, Kluwer Trademark Blog, April 19 2019, http://trademarkblog.kluweriplaw.com/2019/04/19/trademark-case-kroma-makeup- eu-llc-v-boldface-licensing-branding-inc-usa/ In India, so-called translation cases, where a later mark is (or is alleged to be) a mere translation of an earlier mark leading to confusion resulting from conceptual similarity, are dealt with under the concept of “deceptive similarity”. While earlier decisions seemed to favour a broad interpretation of this concept, the judgment of the Delhi High Court dated 31 January 2019 in the case of M/S Allied Blenders and Distillers Pvt. Ltd. v. Govind Yadav & Anr seems to support closer scrutiny. In this case, the Court ruled that the trademarks “Officer’s Choice” and “Fauji’s”
were not deceptively similar. The plaintiff had trademarked the term ‘Officer’s Choice’ in the year 1988 and was using this for alcoholic beverages. The defendants were using the mark ‘Fauji’ with respect to the same products. The plaintiff argued that the literal translation of the term “Fauji” would be “military officer”. Also, since they were in the same business, the likelihood of confusion among the consumers would be high. The Court held that the trademarks were not similar. The words were phonetically different and, whilst the expression “officer” referred to “a person in power”, the term “Fauji” meant a simple soldier. The case laws relied on by the plaintiff was not accepted by the Court. In particular, the plaintiff relied on the earlier judgment of 8 February 1994 in the case of M/s Surya Roshini Ltd. v. M/s Electronic Sound Components Co., where the Delhi High Court had held that there was deceptive similarity between the trademarks “Surya” and “Bhaskar” as both marks are literal translations of the word ‘Sun’. Similarly, in the case of M/s Bhatia Plastics v. M/s Peacock Industries Ltd., the two trademarks “Peacock” and “Mayur” were held to be deceptively similar as both represented a bird. It is to be noted that in such cases, the marks were literal translations, which was not the case in the Fauji matter. The concept of deceptive similarity is, however, not limited to conceptual similarity. In the case Mahendra and Mahendra Paper Mills Ltd. v. Mahindra and Mahindra Ltd., the Supreme Court decided in 2001 that the name “Mahendra & Mahendra” infringed the earlier business name “Mahindra” which had been in use for over five decades and had acquired distinctiveness and a secondary meaning as a result, basing this on phonetic similarity.
Trademark case: Applied Underwriters, Inc. v. Lichtenegger, USA Kluwer Trademark Blog April 19, 2019 Jody Coultas (CCH) Please refer to this post as: Jody Coultas, ‘Trademark case: Kroma Makeup EU LLC v. Boldface Licensing & Branding Inc., USA’, Kluwer Trademark Blog, April 19 2019, http://trademarkblog.kluweriplaw.com/2019/04/19/trademark-case-kroma-makeup- eu-llc-v-boldface-licensing-branding-inc-usa/ The creators of a seminar critical of Applied Underwriters Inc.’s EquityComp insurance program did not infringe or dilute Applied’s federally registered trademarks by using them in the name of their seminar or the promotional materials related to it, the U.S. Court of Appeals in San Francisco has held. In affirming a district court’s dismissal because use of the marks constituted nominative fair use, the appeals court concluded that Applied’s service was not readily identifiable without use of the trademarks, the seminar creators used only so much of the trademarks as was reasonably necessary, and use of the trademarks did not suggest sponsorship or endorsement (Applied Underwriters, Inc. v. Lichtenegger, January 15, 2019, Smith, M.). Case date:15 January 2019 Case number: No. 17-16815 Court: United States Court of Appeals, Ninth Circuit A full summary of this case has been published on Kluwer IP Law.
Article names in fashion – indications of origin? Kluwer Trademark Blog April 19, 2019 Jody Coultas (CCH) Please refer to this post as: Jody Coultas, ‘Trademark case: Kroma Makeup EU LLC v. Boldface Licensing & Branding Inc., USA’, Kluwer Trademark Blog, April 19 2019, http://trademarkblog.kluweriplaw.com/2019/04/19/trademark-case-kroma-makeup- eu-llc-v-boldface-licensing-branding-inc-usa/ It is longstanding practice in fashion to designate certain products not only by
illegible article numbers, but by names. Many times male or female personal names are chosen. When there is a broad range of products, many names are needed by a fashion company. Many times these will not be needed for a long time, as fashion changes quickly. Will those all have to be cleared and secured by trademark rights? The answer for Germany is still yes. A recent decision by the Higher Regional Court Frankfurt confirmed that the public regards article names for fashion products not simply as means of individualizing certain products, but as indications of origin (Decision of 7 June 2018 in Case 6 U 94/17). In the case before the Higher Regional Court Frankfurt, the defendant promoted its products online and used in the heading of its online offer the product designation “X female trousers MO” with X being (a placeholder for) its own trademark. The claimant is owner of the German trademark “MO” registered for female outer wear and trousers. The Court found trademark infringement based on double identity. It initially confirmed that the sign “MO” was regarded as secondary brand next to the defendant’s trademark “X“, as the public is used to secondary brands being used side-by-side to main brands. The public would therefore perceive “MO” as the name of the trousers’ model and “X” as the umbrella brand or company name. The defendant argued that regardless of identity, there was no trademark infringement, as the public would not perceive “MO” in the attacked product designation as an indication of origin. It would rather take the sign “MO” only as an order reference or mere internal model designation. The Court pointed out that “MO” was already used in the product designation, and not only when it came to ordering the product. In addition, “MO” was not needed in the ordering process; for ordering, the customer only needed to click “add to my basket”. In addition, a model number is indicated in the article description. Even the customer who does not order directly would not put down the name “MO” for ordering, but rather the model number. Also, in the invoice for a test purchase which was submitted in the proceedings, it reads “X female trousers MO walnut marl”, followed in the line below by the article number. Further appeal was not admitted, but a complaint against this decision has already been filed with the Federal Supreme Court (Court reference I ZR 108/18). This is
not likely to be successful, as most Regional or Higher Regional Courts decisions in Germany confirm trademark infringement under similar circumstances. Only the Regional Court Düsseldorf held in a very detailed decision of 20 December 2017 in Case 2a O 248/16 that no trademark infringement was given where the sign “SAM” was used as indication of a trousers model which was promoted online as “ALBERTO Slim Fit Trousers SAM”. The Court held in this case – where it was demonstrated that the claimant in this matter used a large number of different first names as model designations for its fashion products – that the claimant’s mark “SAM” was not used as a trademark. The Court held that under the particular circumstances of the case and under consideration of the customary use of first names in catalogues, price lists and decorations as mere product designations in the fashion industry, the public would not perceive the sign “SAM” as a trademark. It has to be added that the model name “SAM” was not used in the heading of the advertising, but merely as part of the article description. For the time being, we can only recommend clearing model names in fashion prior to use in Germany (and presumably elsewhere in the EU). Philipp Plein v. Rezon Ltd – The first Bulgarian decision related to liability of intermediaries Kluwer Trademark Blog April 19, 2019 Jody Coultas (CCH) Please refer to this post as: Jody Coultas, ‘Trademark case: Kroma Makeup EU LLC v. Boldface Licensing & Branding Inc., USA’, Kluwer Trademark Blog, April 19 2019, http://trademarkblog.kluweriplaw.com/2019/04/19/trademark-case-kroma-makeup- eu-llc-v-boldface-licensing-branding-inc-usa/
The Sofia City Court, Commercial Division reached a landmark decision on
November 15, 2018, when it issued a judgement holding that the company REZON
Ltd., which manages and operates the on-line marketplace , violated
the rights of the trademark owner PHILIPP PLEIN. The breach occurred through the
use of these trademarks in the commercial activity of the Respondent which it
carries out in relation to the management of the site. As a result of this finding, the
Court ordered REZON Ltd. to suspend the use of the PHILIPP PLEIN trademark. The
decision is not yet final, but it represents the first case ever in which Bulgarian
courts have determined the liability of an intermediary for infringement of IP rights.
While the decision is not binding on other chambers of the Sofia City Court or other
courts, it is nevertheless expected to encourage other trademark owners to have
confidence in the Bulgarian Rule of Law and to defend their rights on the basis of
similar legal arguments.
The Case
As the owner of many EUTMs, PHILIPP PLEIN filed a lawsuit against REZON Ltd. on
the basis of the sale of counterfeit goods by users of , by means of
which both natural and legal persons have used the trademarks without
permission. The filing of the case was preceded by a number of take-down notices
filed on behalf of PHILIPP PLEIN, but ultimately, the Respondent refused to comply
with the take-down notices and numerous additional letters which were sent.
The matter at issue is focused on the role of publishing ads for the sale of goods,
namely whether the Respondent, in its role of site administrator, controls the
information and maintains filters for it, or whether its activity is purely technical
and has a “passive” character, i.e. does it have control over the stored information
and the data in the sales ads published by third parties. In determining that, the
court had to answer whether REZON Ltd. provides “optimization” support for the
presentation of the proposed sales on the site.
The Court found that the Respondent did in fact assist certain users in the
presentation and advertising of their proposals for the sale of counterfeit goods on
the grounds of the following facts:
1. In the General Terms and Conditions of , there is a prohibition
of the publication of sales announcements for electronics that are
“replicas,” and such advertisements will be removed ex officio. However,
such prohibition is missing for other goods. This excludes the “passive”role of REZON Ltd., and it was obvious to the Court that the company not
only has control over the published information but also has the resources
to exercise it.
2. It has been proven that the Respondent receives detailed information from
the delivery company about the sales made.
3. REZON Ltd. provides bonus points to persons who have posted sales
announcements, if a sale is made. Until recently, the bonus points have
been paid in cash, and then advertising services are provided as
compensation.
4. Certain advertisements which are paid and based on this service are
published as VIP or TOP, which proves the optimization of the way the
adverts are presented; this is contrary to the Respondent’s claim of having
a passive role.
Based on these factual findings, the Court held that the conduct of REZON Ltd. can
also be treated as “advertising of goods or services,” which is in accord with the
Applicant’s allegations. Furthermore, the Court entirely dismissed the
Respondent’s defense, based on Article 14 of Directive 2000/31/EC (e-Commerce
Directive) by which Respondent was allegedly only hosting ads and had no actual
knowledge of infringements, and ultimately ruled in favor of PHILIPP PLEIN.
Impact
This case is the first of its kind to be dealt with in Bulgaria and will have a
significant impact on subsequent similar cases. This is, of course, in accord with
the European Union law and practice, and such consistency reinforces confidence
in the Bulgarian legal system. Should this or a future case reach the Supreme
Court of Bulgaria, it may facilitate the formation of binding caselaw to provide the
necessary degree of protection for trademark owners when counterfeits of their
goods are being sold online.Germany: No preliminary injunction if defendant has already stopped infringement Kluwer Trademark Blog April 19, 2019 Jody Coultas (CCH) Please refer to this post as: Jody Coultas, ‘Trademark case: Kroma Makeup EU LLC v. Boldface Licensing & Branding Inc., USA’, Kluwer Trademark Blog, April 19 2019, http://trademarkblog.kluweriplaw.com/2019/04/19/trademark-case-kroma-makeup- eu-llc-v-boldface-licensing-branding-inc-usa/ The Regional High Court of Nuremberg rejected a request for an interim injunction in a trade mark case on appeal, considering that the defendant had already stopped the trade mark infringement at the time when the applicant (plaintiff) was seeking injunctive relief (judgment of 10 October 2018, 3 W 1932/18). The court decided that it had been unreasonable to grant a preliminary injunction, because the plaintiff could still enforce its trade mark rights in the main proceedings on the merits, without suffering disproportionate harm in the meantime. The case was about a possible infringement of the plaintiff’s commercial designation (company name or trade name, the decision does not show the designation) by use of a photo depicting a sign as marginally shown below on the defendant’s website.
The court of first instance refused to issue a preliminary injunction because the subject sign depicted by the photo had not been used as an indication of origin. The Nuremberg Appeal court confirmed the outcome but applied a different reasoning by deciding that the matter was not urgent. To understand the reasoning of the court, it is worthwhile to note peculiarities under German procedural law. In principle, a preliminary injunction requires a legal dispute to be settled urgently in order to prevent substantial damages or disadvantages (sec. 940, 935 German Code of Civil Procedure). Case law on this general provision requires the applicant to show a case of urgency. In deciding on a request for a preliminary injunction, the courts will have to balance the interests of both parties. There is one important exception to this principle in unfair competition matters, as sec. 12(2) Act against Unfair Competition provides that provisional injunctions can be granted without exposition and substantiation of the urgency. It would be helpful for the owner of a trade mark or trade name if this presumption of urgency would equally apply to trade mark matters. And indeed, a few courts apply the presumption of urgency to trade mark law by analogy (for example the courts of Stuttgart and Bremen). In contrast, the majority of courts deny the presumption of urgency in trade mark cases as evidenced by recent decisions (for example Cologne, Düsseldorf, Frankfurt, Hamburg and Munich). In most domestic trade mark cases the plaintiff can choose the competent local court nationwide, so he can pick the court he deems most appropriate, for example in
terms of urgency. In the present case, the Nuremberg court took the view that there is no presumption of urgency in trade mark litigation matters, so that the plaintiff was expected to show why the granting of a preliminary injunction was necessary to secure his rights, and why the plaintiff could not wait for a decision in the main proceedings. The court stressed that in most trade mark infringement matters, the balance of interest (urgency) will swing in the plaintiff’s favour, on condition that the infringement continues. However the present case was different because the defendant had stopped the infringement by removing the photo from its website. The decision is notable, because other courts have dealt so far with cases where the defendant also stopped the infringement, but in connection with certain time- dependent events. For example, if the plaintiff asks the court to issue an interim injunction against certain acts committed by the defendant at a specific trade fair, the matter is not urgent if the trade fair has been terminated yet. In the present case, the court took a step forward by deciding that the stop of the infringement as such is sufficient to dispel the urgency. One important issue remains to be unsettled, because the court did not clarify if putting an end to the infringement is sufficient to deny the urgency of the matter, or if the defendant must also take active steps such as recalling products delivered to its customers (comparable to the defendant’s obligation in relation to cease- and-desist orders imposed by a German court). Further, the decision of the Nuremburg court is not binding on other courts and it is yet to be seen whether the opinion is shared by other courts. Czech and Slovak Trademark Acts
Amended Kluwer Trademark Blog April 19, 2019 Jody Coultas (CCH) Please refer to this post as: Jody Coultas, ‘Trademark case: Kroma Makeup EU LLC v. Boldface Licensing & Branding Inc., USA’, Kluwer Trademark Blog, April 19 2019, http://trademarkblog.kluweriplaw.com/2019/04/19/trademark-case-kroma-makeup- eu-llc-v-boldface-licensing-branding-inc-usa/ Amendments to the Czech and Slovak Trademark Acts implementing the EU trademark reform of 2015 have been recently passed by the respective parliaments. The amendments will become effective on 1 January 2019 in Czechia and on 14 January 2019 in Slovakia. There are 3 major changes to be noted: 1) New definition of a trademark The amendments eliminate the requirement for a sign to be capable of graphic representation, which is replaced by requirement of being represented on the register in a manner which enables to determine the clear and precise subject matter of the protection afforded to its proprietor. New types of non-traditional trademarks have been introduced: position, pattern, sound, motion, multimedia and hologram marks. 2) No official examination on relative grounds Under the amendments, the Czech and Slovak Offices will no longer refuse later applications on grounds of earlier identical marks protected for identical goods and services. The proprietor of the earlier mark will have to seek rejection in opposition proceedings. 3) Proof of use in opposition and infringement proceedings The possibility is introduced for the applicant to request proof of use of trademarks invoked in oppositions proceedings that are older than 5 years from registration. The applicant may only file the request within inextensible and non-restorable time limit of 2 months from notification of the opposition. The opponent must submit evidence within 4 months from notification of the request. Proof of use may also be
for requested by the defendant in infringement proceedings before courts. In
Czechia, proof of use may be requested in opposition cases initiated after 1
January 2019. In Slovakia, proof of use may be requested in opposition cases
where the 2-month time limit from notification of the opposition to the applicant
did not expiry before 14 January 2019.
Russia: IP Court compelled domain
registrars to remove illegal
content
Kluwer Trademark Blog
April 19, 2019
Jody Coultas (CCH)
Please refer to this post as: Jody Coultas, ‘Trademark case: Kroma Makeup EU LLC
v. Boldface Licensing & Branding Inc., USA’, Kluwer Trademark Blog, April 19 2019,
http://trademarkblog.kluweriplaw.com/2019/04/19/trademark-case-kroma-makeup-
eu-llc-v-boldface-licensing-branding-inc-usa/
The issue of whether domain registrars shall
be liable for online infringements has been
actively debated in Russia for the recent 3
years. Starting from a remarkable MMK vs.
REG.RU case (А40-52455/2015), where the IP
Court
refused to apply the regime of information intermediaries.After several futile attempts, the IP Court’s recent decision in Azbuka Vkusa vs. Registrator R01 case (A40-132026/2017) has become a major win. The court found a new legal mechanism (deeply hidden in the Civil Code) against domain registrars. BACKGROUND The IP Court’s landmark judgment was rendered on 4 July 2018. Under the merits of the case, Azbuka Vkusa (trademark holder) sued Registrator R01 (prominent domain registrar) aimed to cease delegation of azbuka-vkusa-nim.ru. The courts of the first, appeal and cassation instances satisfied the claims. They noted that the issue of whether domain registrars are classified as information intermediaries has no ultimate legal significance. Instead of the specific regime of information intermediaries, judges have to examine if domain registrars fall under the general regime of persons capable to cease an infringement or a threat thereof. As a defense, the domain registrar referred to the mandatory Terms and Conditions of Domain Name Registration in .RU and .РФ. The document contains an exhaustive list of the grounds when domain registrars have to cease delegation. Trademark infringements are not on the list, what impedes domain registrars from the right to cease delegation, as alleged by the respondent. The IP Court strongly criticized this argument. The judges noted that the industrial standard in no way can undermine the trademark holder’s right to demand ceasing an infringement [Civil Code, art. 1252(1)(2)].
IMPACT
A fierce dispute on classification of registrars as information intermediary in fact
has taken a back seat.
Now removal of illegal content can be achieved with less effort if a domain
registrar is evidenced to be a person capable to cease an infringement in the
court.
(!) Important for trademark holders:
to sue a domain registrar, one does not have to prove the status of
information intermediary, a mere reference to capability of ceasing an
infringement [Civil Code, art. 1252(1)(2)] shall suffice
(!) Important for domain registrars:
if sued for a trademark infringement, a domain registrar is entitled to claim
damages (e.g., expenses for legal services) against a domain administrator
(Terms and Conditions of Domain Name Registration in .RU and .РФ, art.
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