Reposted from DLA Piper’s Law à la Mode Edition 4 – Winter 2011

By:  Michael K. Barron, Sarah Phillips and Nadea Taylor (Boston and London)
“AdWords,” the paid, subscription-based Google referencing service which allows users to advertise their companies alongside Google search results, has recently been the subject of much legal scrutiny.  In late September, the European Court of Justice (ECJ) gave a preliminary ruling on questions referred to it by the English High Court in the case between Interflora and Marks & Spencer (“M&S”), regarding the purchase by M&S of the Google AdWord “Interflora” and other similar AdWords. 
In answering the questions referred to it, the ECJ repeated much of the recent jurisprudence in this area, in particular from the Google France case.  Previous cases established that purchasing a third parties’ trademark as an AdWord would only amount to trademark infringement if such use would have an adverse effect on one of the functions of the trademark.  
The ECJ gave the following guidance on how national courts should assess whether the use by a third party of a sign identical with a trademark in relation to identical goods or services has an adverse affect on one of the functions of the trademark:

By: Stefania Baldazzi and Annalaura Avanzi  (Milan)

In 1967, the well-known Italian fashion designer Elio Fiorucci founded the fashion brand Fiorucci S.p.A.  After more than two decades of success in Italy and around the world, Mr. Fiorucci sold the company and all of its creative assets to the Tokyo Company Edwin Co. Ltd in 1990.  The sale encompassed all the Fiorucci trademarks, including numerous marks containing the element “FIORUCCI.”

In 1999, Edwin Co. registered the mark “ELIO FIORUCCI,” by filing an application with the Office for Harmonization for the Internal Market (OHIM), which is a body of the European Commission, for a broad category of goods, including cosmetics, apparel, footwear and leather products. 


Continue Reading Edwin Co. v. Elio Fiorucci: Designer and Company Share a Name?

Date:               Thursday 14 July 2011

Time:              14:00-16:15

Location:        Vrije Universiteit Amsterdam, Gebouw Initium, De Boelelaan 1077.

Language:      English

Admission:      Free

Information

On 14 July 2011 the Trademark Law Institute organizes a seminar on the ruling L’Oreal v. eBay (case C-324/09). This ruling of the European Court of Justice is expected on 12 July 2011. This seminar will discuss the liability of operators of electronic marketplaces, such as eBay, etc. Apart from this recent ruling of the European Court of Justice, the seminar will also touch upon the legal landscape in the US and elsewhere in Europe.

The seminar is organised by the Trademark Law Institute (TLI), a cooperation of the universities of Groningen, Leiden and the Radboud Universiteit Nijmegen.

The seminar is open to the public and intended for lawyers, company lawyers, trade mark attorneys, students, lecturers and others who are interested in the legal aspects surrounding trade mark law and the internet.


Continue Reading EVENT in Amsterdam: Trademark use in the online market place: L’Oreal v. eBay

Posted by Alexander Tsoutsanis, senior associate with DLA Piper in Amsterdam.

On Monday 23rd May, Alexander Tsoutsanis spoke at Stanford during the Stanford Intellectual Property Seminar for IP Judges from the People’s Republic of China.


Continue Reading Protecting well-known marks: European insights at Stanford Seminar for Chinese IP Judges

Every quarter our team publishes an Intellectual Property and Technology newsletter, in which we regularly analyze and explore issues related to trademark, copyright and advertising law along with the other areas of IP.  Allyn Taylor, one of our partners, wrote an article for the last edition that we’d like to reshare.

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Protecting your brand on a global scale

By Allyn Taylor

Back when products and services were sold via brick and mortar stores, only large corporations or conglomerates seriously considered seeking global protection for valued brand names. Now, however, in the age of the Internet and Cloud, goods and services can be delivered virtually anywhere. Seeking trademark protection on a global basis is often a logical option for even a small company. Yet the question inevitably arises: “How do I accomplish this in an efficient, cost-effective manner?”


Continue Reading Protecting Your Brand on a Global Scale