All posts by Pinnacle

Trump’s Trademark Triumph

Category: Trademark Information

Donald Trump may have won the election but that is not the only thing that he has won lately.

 Trump has recently been awarded 38 new trademark registrations in China.

 The Chinese trademark system doesn’t require any evidence that the applicant owns that trademark or have used it previously. They employ a “first to file” system in which the first person to file a trademark application has priority.

 This now means that Trump has more than 100 trademarks in China, including 35 that were approved before he became the US president.

 This recent approval of Trump trademarks from China has raised some eyebrows with Senator Ben Cardin even accusing China of “trying to curry favour with the president of the United States.”

 Dan Plan, a director at Simone IP Services, has also commented, “For all these marks to sail through so quickly and cleanly, with no similar marks, no identical marks, no issues with specifications – boy it’s weird.”

 However, China’s foreign ministry spokesman Geng Shuang objected to these claims, stating that every trump Trademark was received and managed “in accordance with the law and regulation.”

 Spring Chang is a founding partner at Chang Tsi & Partners, a Beijing law firm that has previously represented the Trump Organisation has refused to comment specifically on Trump’s trademarks but she added, “I don’t see any special treatment to the cases of my clients so far.

 “I think they’re very fair and the examination standard is very equal for every applicant.”

 There are currently no plans for Trump to launch new products or services using the trademarks. Rather, this appears to be a defensive move to protect his brand and intellectual property in China.

 Several of our Australian clients have had us file applications for their brands in China and we are hoping for the same results as Donald Trump’s applications.

Louboutin Loses Case to Trademark Its Famous Red Soles in Switzerland

Category: Trademark Information

When you hear the name “Louboutin” what do you immediately think of?

Most people will say it is their trademark red soles.

The only problem is that Christian Louboutin was unable to obtain a registered trademark for these red soles in Switzerland.

The Parisian footwear brand has been turned down by the Federal Supreme Court of Switzerland in Lausanne to obtain federal trademark protection for its red soles. Although it is currently trademarked in the United States, China, Russia and Australia, the court ruled that it does not automatically mean that it is entitled to the same trademark rights in Switzerland.

This is not the first time that the footwear brand has been engaged in a trademark battle.

In 2011, Louboutin initiated a legal battle against Yves Saint Laurent (“YSL”) over their footwear collection that featured shoes that were in the colour red, including the sole. While Louboutin claimed that YSL was liable for trademark infringement and counterfeiting, false designation of origin, unfair competition and trademark dilution, a New York federal judge denied this and Louboutin lost the case.

However, the brand was able to keep its trademark for the red sole in the U.S. after YSL filed a counterclaim based on the grounds that the red sole trademark should be cancelled because it was merely ornamental and was not distinctive enough, hence making it ineligible for trademark protection.

There were certain limitations placed on the trademark, however, as the court ruled though, that the trademark only applied in circumstances where the red sole contrasted to the rest of the shoe.

Harley-Davidson Sue Urban Outfitters for Trademark Infringement for the Second Time

Category: Trademark Information

Urban Outfitters have found themselves being sued for trademark infringement by Harley-Davidson – again.

Harley-Davidson have alleged that the popular clothing brand have violated their trademark rights for the second time. The items in question are the Urban Outfitter’s “FPV HARLEY BODYSUITS”. As a collective, these bodysuits are named, “Infringing Bodysuits”.

Harley-Davidson have several trademark protections including their full-name and the independent word “Harley”. The company alleged that the brand “uses and has used the Harley-Davidson marks in a variety of unauthorized ways that falsely suggest and are likely to create the mistaken impression that [Urban Outfitters’] products come from or are authorized, approved and/or licensed by Harley-Davidson when they are not.”

They state that “…some of the Infringing Bodysuits are made from genuine Harley-Davidson products that Defendants have altered and reconstructed into new products that bear the Harley-Davidson trademarks [and that] some of the Infringing Bodysuits appear to not be genuine Harley-Davidson products and do not bear any of the Harley-Davidson trademarks, but Defendants have sold these products with tags, labels, receipts, and/or packaging that bear the HARLEY mark and falsely suggest that the Infringing Bodysuits are Harley-Davidson products.”

This is not the first time that Urban Outfitters have found themselves on the receiving end of a Harley-Davidson lawsuit. In 2014, Urban Outfitters were accused of violating Harley-Davidson’s trademarks by selling altered, such as cut-up or shredded, versions of their apparel products.

Subsequently, Harley-Davidson state that by stocking and selling the FPV HARLEY BODYSUIT, Urban Outfitters are directly violating the settlement terms from their 2014 lawsuit in which they “agreed that it would not knowingly make, promote, sell, or distribute Harley-Davidson apparel products that have been altered or reconstructed.”

The company are seeking a court order that prevents Urban Outfitters from selling products that contain any of their protected trademarks as well as monetary compensation for any profits that they may have made from these products in question.

Rubik’s Cube Is Stripped of Its Trademark Protections

Category: Trademark Information

We all know the Rubik’s Cube; the multi-coloured, six-sided puzzle that has baffled millions of people around the world since its invention by Erno Rubik in 1974 under the name Magic Cube.

Through the years, the appeal of Rubik’s Cube has never wavered. However, its trademark protection may not be as secure as its popularity.

In April 1999, the Rubik’s Cube won a trademark on its distinctive shape through the British company Seven Towers – its intellectual property rights manager.

In 2006, German firm Simba Toys challenged this trademark. They alleged that the Rubik’s Cube should not be protected by a trademark but by a patent. This resulted in a decade-long trademark battle.

While Simba Toys lost at the European Union Intellectual Property Office (EUIPO) and at the General Court, they won the appeal at the European Court of Justice (ECJ). The ruling was based on the fact that when a shape is a fundamental factor in producing a “technical result”, i.e. it’s rotating cubes, it is not qualified for trademark protection.

The judges of the ECJ stated, “In examining whether registration ought to be refused on the grounds that shape involved a technical solution, EUIPO and the General Court should also have taken into account non-visible functional elements represented by that shape, such as its rotating capability.”

This not only gives way to fear that the brand will have to compete with cheap, copycat imitations but that it will set a “damaging precedent.”

David Kremer, Rubik’s Brand UK President, told The Guardian, “We are disappointed by today’s decision by the ECJ. While the Rubik Brand is fortunate in having other trademarks, copyright, passing off and unfair competition protection to rely on which will continue to ensure its exclusivity, this judgement sets a damaging precedent for companies wishing to innovate and create strong brands and distinctive marks within the EU, and is not what European lawmakers intended when they legislated for 3D trademarks.

“We are baffled that the court finds functionality or a technical solution implicit in the trademark.”

Rubik’s Brand is unable to appeal the ECJ’s decision, as the ruling is final.