INSIGHTS

Can you just copy a picture from the internet? The Internet is great. The digital revolution brings countless good developments and never has there been such easy access to so much information. Yet, there are also negative sides to the Internet. Unauthorized use of copyrighted material is one. What is there to know about that?

Trademark owners can let out a sigh of relief. An unclear description of goods and services of a trademark does not invalidate the trademark registration. And if the applicant is not at all economically active in relation to the goods and services concerned, this is no reason to assume 'bad faith'.

Brand awareness surveys, turnover figures and market reports. Do they really matter in proceedings concerning trademark infringement and unlawful use of a trade name? A recent judgment of the District Court of The Hague shows the added value of a well-designed market survey.

H&M is again allowed to use two stripes on its clothing without it constituting an infringement of adidas' three-striped trademark. After years of battle, the Court of Appeal of The Hague decided this on 28 January 2020, surprisingly differing from the decisions of the Court of The Hague in the first instance and from the Court of Appeal of Arnhem in preliminary injunction proceedings regarding exactly the same garments, the "Work Out clothing.

The Koton case, which has just been discussed, provides a stepping stone to stop parties that systematically file trademarks of third parties (both for similar and completely different goods). The now infamous Michael Gleissner is the worst example of this practice with a web of companies.

A trademark that has been applied for with an unfair purpose can be subsequently declared invalid as an application in bad faith. For example, if the application was made in order to unfairly harm the interests of third parties. Or for a purpose other than to distinguish one's own goods or services. The Court of Justice ruled on this matter in the Koton case.

For preliminary injunction proceedings on Community designs, the rightholder can go to any court in the Netherlands. This follows from a decision of the Court of Justice, which also applies to EU trademarks. In proceedings on the merits on EU trademarks and designs, the court of The Hague remains the only competent court.

European prohibition therefore more accessible - G-Star/Cofemel, on copyright and design rights in product design.

Can the person in the pool of "Portrait of an Artist" wear Louis Vuitton swimming trunks and can a bottle of Dom Pérignon be placed on the table at Da Vinci's Last Supper? In short: are you allowed to use the trademarks of others in an artistic expression?

A company elsewhere in the EU uses your EU trade mark in an online advertisement without permission. The advertisement is aimed at the Dutch public. As a Dutch trade mark owner, can you bring the infringer before a Dutch court? The Court of Justice of the European Union (ECJ) provided the answer in its judgment AMS Neve/Heritage Audio: yes.

Can you re-register a trademark if it hasn't been used for five years? This would allow the trademark to be declared invalid. Or does the law preclude such a repeated deposit? In the Pelican case, the General Court had already ruled in 2012 that an application may not be repeated exactly, at least not if the purpose of the identical application is to circumvent the rules for use. In the MONOPOLY case, the Board of Appeal has now nuanced that view.

Parallel import involves trade in original products. However, because the products are intended for another market (and not for Europe), they are purchased at lower prices. These parallel imported goods are then offered for sale in Europe against lower prices and not through the official distribution channel. This is a major problem for many trademark owners.

A trademark owner must start using the trademark normally within five years after registration, otherwise the registration can be cancelled. This is a problem for Viridis Pharmaceutical, because the clinical trials for its medicine have not yet been completed. And so she can't use its trademark VIRIDIS yet.

You can’t use a recognizable music sample (however short) without authorization from the phonogram producer (i.e. the owner of the recording). That is how the Grand Chamber of the European Court of Justice (15 judges) decided on 29 July 2019 in its infinite wisdom. Press release from the ECJ here.

We get this a lot: you have a good idea for a book/app/film/game and you want to make sure that no one else takes your idea and runs with it. Is your idea or concept protected by copyright?The short answer is no. The protection offered by copyright is only intended for the so-called expression of the idea or concept. The concept of a movie about young wizards at a school for magic cannot be protected, but the movie Harry Potter and the Philosopher's Stone itself can be.

As of 1 September 2019 attorney-at-law Moïra Truijens is named partner with Amsterdam IP boutique firm Hoogenraad & Haak. Moïra mainly focusses on trademark, design and technology (patent law) issues. She works for both international concerns as for medium small enterprises. Moïra’s clients are primarily active in fashion, design and innovation.

The four-year dispute between Louis Vuitton and My Other Bag has finally been settled.My Other Bag sells canvas bags with (simplified) images of designer bags from various luxury brands for $30 a piece. Those of Louis Vuitton are well represented in the My Other Bag collection.