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© Copyright 2019 by K&L Gates LLP. All rights reserved.
Susan Kayser, Friederike von Brühl, Serena Totino, Anaïs Ligot, Simon Casinader, Savannah Hardingham
Trademark, Design and Copyright Update For Fashion Brands
Luxury & Fashion Webinar Series – Facing the FutureMarch 21, 2019
TODAY‘S PRESENTERS – A WARM WELCOME
LondonSimon Casinader,
Sr. Associate
BerlinFriederike von Brühl, Partner
MelbourneVIA RECORDING:
Savannah Hardingham, Partner
Washington DCSusan Kayser, Partner
LondonSerena Totino, Associate
ParisAnaïs Ligot, Associate
klgates.com 2
OVERVIEW OF TOPICS
– U.S. Issues and Cases
Proving Irreparable Harm Continues To Evolve
Blurring The Line In Using Celebrity Names Or Images
Parody Or Infringement - How Funny Does It Need To Be?
U.S. Supreme Court Weighs in on IP Issues
– EU Directive 2015/2436
– EU Issues and Cases
– Brexit
– Australia Issues and Cases
Copyright protection for clothing
Google Ads and trade mark infringement
klgates.com 3
OVERVIEW OF TOPICS
– U.S. Issues and Cases
Proving Irreparable Harm Continues To Evolve
Blurring The Line In Using Celebrity Names Or Images
Parody Or Infringement - How Funny Does It Need To Be?
U.S. Supreme Court Weighs in on IP Issues
– EU Directive 2015/2436
– EU Issues and Cases
– Brexit
– Australia Issues and Cases
Copyright protection for clothing
Google Ads and trade mark infringement
klgates.com 4
U.S. ISSUES AND CASES –“PROVING” IRREPARABLE HARM
Irreparable Harm Needed for Injunctive Relief‒ May 2006 – eBay v. MercExchange – U.S. Supreme Court rejects
“presumption” in patent cases– 2014 Ninth Circuit – Herb Reed Enterp. v. Florida Entertainment Mgmt. –
plaintiffs in trademark actions must show irreparable harm (no presumption)
Third Circuit – Groupe SEB USA Inc. v. Euro-Pro Operating LLC –“permissable inference” of irreparable harm
Supreme Court did not accept cert in Herb Reed– 2014 – 2018 Continued split requiring “proof” of irreparable harm, “inferences”, or
middle ground – some “proof”
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U.S. ISSUES AND CASES –PROVING IRREPARABLE HARM CONTINUES TO EVOLVE
adidas v. Skechers* 9th Circuit
adidas asserted trade dress for Stan Smith design: – three perforated stripes on the body of the shoe, – prominent heel tab, and – "a particularly flat sole," among other elements
Adidas Am., Inc. v. Skechers USA, Inc., 890 F.3d 747 (9th Cir. 2018)
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U.S. ISSUES AND CASES –THE STAN SMITH v. THE SKECHERS ONIX
adidas* proved irreparable harm: 1. Consumer surveys 2. Extensive marketing efforts3. Controlled supply of Stan Smiths available for purchase
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Adidas Am., Inc. v. Skechers USA, Inc., 890 F.3d 747 (9th Cir. 2018)
U.S. ISSUES AND CASES –THE STAN SMITH v. THE SKECHERS ONIX
adidas built a specific reputation around the Stan Smith with “intangible benefits”
– Extensive and targeted advertising– Unsolicited media– Survey– Controlling Supply
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Adidas Am., Inc. v. Skechers USA, Inc., 890 F.3d 747 (9th Cir. 2018)
U.S. ISSUES AND CASES –THREE STRIPE MARK v. SKECHERS CROSS COURT
adidas failed to show irreparable harm
Three-Strip Mark The Skechers Cross Court
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Adidas Am., Inc. v. Skechers USA, Inc., 890 F.3d 747 (9th Cir. 2018)
U.S. ISSUES AND CASES –THREE STRIPE MARK v. SKECHERS CROSS COURT
Evidence of Loss of Control over Business Reputation and Damage to Goodwill = Irreparable Harm
Provided “Concrete Evidence” in the Record
Post-sale confusion and “value” brand arguments not sufficient– Not sufficient evidence that Skechers had less favorable reputation– No evidence of consumer perception
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U.S. ISSUES AND CASES –THREE STRIPE MARK v. SKECHERS CROSS COURT
Judge Clifton’s Dissent: Lesser quality imitator could harm value of prestige brand
Record evidence to support irreparable injury– Employee testimony: adidas is “premium sports brand” and Skechers is
“value brand”– Value of adidas’ mark– Investment– Quality control
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U.S. ISSUES AND CASES –TAKEAWAYS ON PROVING IRREPARABLE HARM
– Venue matters
– “Prestige” v. “Lower Quality”
– Employees ≠ Consumer Perception
– Advertising
– Unsolicited media
– Controlling Supply
– Surveys
klgates.com 12
U.S. ISSUES AND CASES –BLURRING THE LINE IN USING CELEBRITY NAMES OR IMAGESUse of celebrity’s name might be legal even when clearly chosen to capitalize off famous singer’s name
– Feyoncé Inc. selling T-shirts and other goods featuring “Feyoncé”
– References Beyoncé’s 2008 “Single Ladies” track
Knowles-Carter et al. v. Maurice et al., 1:16-cv-02532 (S.D.N.Y.)
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U.S. ISSUES AND CASES –BEYONCÉ v. FEYONCÉ
– Use of letter “F” in “FEYONCÉ” was a play on words to sound like “fiancé”
– A pun the court found could dispel consumer confusion
– SJ and a permanent injunction denied– Case dismissed– Number of FEYONCÉ items currently for
sale by third parties
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Knowles-Carter et al. v. Maurice et al., 1:16-cv-02532 (S.D.N.Y.)
U.S. ISSUES AND CASES –PARODY OR INFRINGEMENT - HOW FUNNY DOES IT NEED TO BE?
Louis Vuitton Malletier SA v. My Other Bag Inc., 1:14-cv-03419 (S.D.N.Y.)
klgates.com 15
U.S. ISSUES AND CASES –PARODY OR INFRINGEMENT - HOW FUNNY DOES IT NEED TO BE?
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U.S. ISSUES AND CASES –LOUIS VUITTON v. MY OTHER BAG
A parody must convey two simultaneous and contradictory messages: – that it is original – but also that it is not the original and is instead a parody– MOB met this standard
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Louis Vuitton Malletier SA v. My Other Bag Inc., 1:14-cv-03419 (S.D.N.Y.)
U.S. ISSUES AND CASES –LOUIS VUITTON v. MY OTHER BAG
– “My Other Bag is a…” = a designation of source Makes clear that MOB’s tote bag is not a LV-branded bag but merely
a parody– LOC = extremely low– MOB's parodic use of LV's designs: produces a “new expression [and] message” constitutes transformative use
klgates.com 18
U.S. ISSUES AND CASES –TAKEAWAYS
– Parody part of initial confusion assessment– Play on Words– Merely co-opted the mark? Or repurposed it?– Third Party Use– Negative Press / “Bullying” Charges Against Big Brands
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U.S. ISSUES AND CASES –U.S. SUPREME COURT RESOLVES CIRCUIT SPLIT ON COPYRIGHT REGISTRATION REQUIREMENT
– Supreme Court unanimously held: copyright owners must obtain a registration from the U.S. Copyright Office prior to filing an infringement action
– Impact: likely to be a flood of copyright applications at the U.S. Copyright Office low cost to file average seven-month wait time to receive
registration
Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 586 U.S. __ (slip op., March 4, 2019).
klgates.com 20
U.S. ISSUES AND CASES –FOURTH ESTATE PUBLIC BENEFIT CORPORATION v. WALL-STREET.COM
Brands in the luxury goods and fashion industries should routinely file copyright applications
– Fashion companies regularly create seasonal designs used on handbags or clothing (floral prints, animal designs, and other pictorial features/arrangements)
– Packaging designs may be protectable through copyright– Notorious infringers frequently create replicas of designs, and brands
need to be armed and ready with copyright registrations for immediate action upon learning that the brand’s design has been copied
– Registration = prerequisite for statutory damages and attorneys’ fee
klgates.com 21
Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 586 U.S. __ (slip op., March 4, 2019).
U.S. ISSUES AND CASES –DEFINING RECOVERABLE COSTS IN COPYRIGHT LITIGATION
The Supreme Court recently determined that “full costs” under § 505 of the Copyright Act did not authorize the appellate court to award litigation expenses beyond those specified by Congress in the general costs statute
– Not included: expert fees, consultant fees, and electronic discovery costs– Included:
1. clerk and marshal fees2. transcript fees3. printing and witness fees and costs4. exemplification and copying fees5. docket fees6. compensation of court-appointed experts and interpreters
Rimini Street, Inc. v. Oracle USA, Inc. 586 U.S. ___ (slip op., March 4, 2019).
klgates.com 22
OVERVIEW OF TOPICS
– U.S. Issues and Cases
Proving Irreparable Harm Continues To Evolve
Blurring The Line In Using Celebrity Names Or Images
Parody Or Infringement - How Funny Does It Need To Be?
U.S. Supreme Court Weighs in on IP Issues
– EU Directive 2015/2436
– EU Issues and Cases
– Brexit
– Australia Issues and Cases
Copyright protection for clothing
Google Ads and trade mark infringement
klgates.com 23
EU DIRECTIVE 2015/2436 –HARMONIZATION OF EU TRADEMARK REGISTRATION PRACTICE
EU Directive 2015/2436
Aims Strengthening TM owners’ rights Harmonization of EU TM systems
Timing Implementation deadline: January 14, 2019 Almost half of the member states have not implemented yet!
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EU DIRECTIVE 2015/2436 –HARMONIZATION OF EU TRADEMARK REGISTRATION PRACTICE
German Trademark Modernization Act (14 January 2019)
New registration options Before: only graphic display; now: any form of display! Licenses
New technical framework QR-Code on TM certificate Use of key words for TM research
New TM types Sounds, animations, holograms Certification marks
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Certification Mark
Guarantee for certain characteristics of the goods/services Applicants provide a statute Reliability
Relevance for fashion industry Guarantee for standards of material, fabrication, quality e.g. Fair Trade Rules and Environmental Protection
EU DIRECTIVE 2015/2436 –HARMONIZATION OF EU TRADEMARK REGISTRATION PRACTICE
klgates.com 26
OVERVIEW OF TOPICS
– U.S. Issues and Cases
Proving Irreparable Harm Continues To Evolve
Blurring The Line In Using Celebrity Names Or Images
Parody Or Infringement - How Funny Does It Need To Be?
U.S. Supreme Court Weighs in on IP Issues
– EU Directive 2015/2436
– EU Issues and Cases
– Brexit
– Australia Issues and Cases
Copyright protection for clothing
Google Ads and trade mark infringement
klgates.com 27
Description of Trademark Registration EU 008845539:
“The trademark consists of the color red (Pantone 18.1663TP) applied to the sole of a shoe as shown (the outline of the shoe is therefore not part of the trademark but serves to show the positioning of the trademark).”
Notion of “shape”, Article 3(1)(e)(iii) Directive 2008/95:
”A set of lines or contours that outline the product concerned.”
EU ISSUES AND CASES –CJEU – JUDGMENT C-163/16 LOUBOUTIN
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FERRAGAMO’S TRADEMARK RIPANI & VAL VIBRATA
Italian Supreme Court – 2018
EU ISSUES AND CASES –FERRAGAMO v. RIPANI & VAL VIBRATA
EU ISSUES AND CASES –COURT OF MILAN
Ferragamo filed a lawsuit agaist Ripani and ValVibrata claiming:
– Infringement of its iconic «omega» trade marks
– Unfair competition
The Court of Milan decided in Ferragamo’s favour
klgates.com 30
2013 – The first instance decision was overturned:
– Similarity does NOT imply likelihood of confusion in the market– Ripani & Val Vibrata’s signs held an instrumental function, while
the Ferragamo trade mark has an ornamental function
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EU ISSUES AND CASES –COURT OF APPEAL
EU ISSUES AND CASES –THE ITALIAN SUPREME COURT
Marks with reputations should be protected:‒ Independently from the likelihood of confusion
of the relevant public‒ If the infringing mark takes unfair advantage of,
or is detrimental to, the distinctive character or repute of the earlier mark
STAY TUNED…Court of Appeal will have to decide the case
taking into account the reputation of the earlier mark
klgates.com 32
EU ISSUES AND CASES –LANDOLL v. MECS SRL
klgates.com 33
LANDOLL’S TRADE MARK
PRINCIPLE OF EXHAUSTIONPRINCIPLE OF EXHAUSTION
MECS SRL
Unauthorised reseller of NASHI products on its website and on a
third party online marketplace SELECTIVE DISTRIBUTION
AGREEMENT
Court of Milan – 2019
EU ISSUES AND CASES –PRINCIPLE OF EXAUSTION
A trade mark owner may not oppose the further commercialization of its branded goods that are distributed in the EEA with its consent
unless there are LEGITIMATE REASONS:
– Conditions of the goods are changed or impaired– Legitimate selective distribution agreement in place
klgates.com 34
PRELIMINARY INJUCTION:
‒ Principle of exahustion does not apply‒ Selective distribution agreement may be a
«legitimate reason»– Infringement of Nashi Trade mark– Withdrawal of Nashi’s products from the
market within 3 days + legal costs– Publication of the preliminary injuction on
the the reseller’s homepage for 30 days
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Will the Court of Milan uphold this decision?Will this decision be persuasive for other EU Courts?
EU ISSUES AND CASES –COURT OF MILAN
“A distribution system where the supplier undertakes to sell the contract goods …, either directly or indirectly, only to resellers selected on the basis of specified criteria
and
where these resellers undertake not to sell such goods …to unauthorized resellers within the territory reserved by the supplier to operate that system…”
Article 1(e), EC Regulation No. 330/2010 (“Vertical Block Exemption Regulation”)
klgates.com 36
EU ISSUES AND CASES –WHAT IS A SELECTIVE DISTRIBUTION SYSTEM?
EU ISSUES AND CASES –HOWEVER…
Many luxury brands already operate a “DE FACTO” selective distribution system BUT unless structured in accordance with EU laws:
– May not be legally enforceable – so of little/no protective value to brand– May include terms or practices which expose the company to significant
legal risk (see Guess case) Cross-sale restrictions? Territory restrictions? Online sales restrictions? Resale pricing pressures?
klgates.com 37
EU ISSUES AND CASES –LIONEL MESSI v. EUIPO & J.M.-E.V. E HIJOS SRL
Action Trademark registration filed by Opposed by
Party Messi J.M.-E.V. e hijos SRL’s prior trademark
TrademarkWord trademark
“MASSI” No 3436607
Word trademark “MASSI” No
414086
Classes92528
25 928
klgates.com 38
Are these trademarks similar?
Court of the EU – 26 April 2018 No T-554/14
– According to the Court of the EU: Visually: Average degree of similarity Phonetically: Strong degree of similarity Conceptually: Different since Lionel Messi is famous for any average
consumer of sports goods
– Decision of the Court of the EU: No likelihood of confusion The relevant public will associate the term “Messi” with the name of
the football player, not with the trademark “Massi”
klgates.com 39
Are these trademarks similar?
Court of the EU – 26 April 2018 No T-554/14
EU ISSUES AND CASES –LIONEL MESSI v. EUIPO & J.M.-E.V. E HIJOS SRL
EU ISSUES AND CASES –CROCS v. EUIPO AND GIFI DIFFUSION
Action Design registration filed by
Declaration of invalidity by
Party Crocs Gifi Diffusion
Design
klgates.com 40
“Unluxury” shoes – Take 1
Court of the EU – 14 March 2018 No T-651/16
– Considering the three disclosure events: The Crocs’ design had been made available to the public prior to the 12-month period preceding the date of priority claimed
– No demonstration by Crocs that three disclosure events could not: reasonably have become known in the normal course of business to the circles specialized in the sector concerned operating within the EU
– Decision: Lack of novelty
klgates.com 41
“Unluxury” shoes – Take 1
Court of the EU – 14 March 2018 No T-651/16
EU ISSUES AND CASES –CROCS v. EUIPO AND GIFI DIFFUSION
EU ISSUES AND CASES –BIRKENSTOCK v. EUIPO
Action Trademark registration filed by Refused by
Party Birkenstock EUIPO
Trademark
klgates.com 42
“Unluxury” shoes – Take 2
Court of the EU – 13 Sept. 2018 No C-26/17
Criteria for distinctive character for surface patterns – Criteria for trademarks that coincide with the appearance of the goods is
applicable to surface patterns trademarks. When the use of a pattern is unlikely in the light of the nature of the
products at issue -> no coincidence with the goods and services = distinctive trademark
When the use of a surface pattern for fashion items is made up of elements which are repeated regularly and can be extended ad infinitum, it lends well to being used as a surface pattern -> it coincides with the goods and services = no distinctive trademark
klgates.com 43
“Unluxury” shoes – Take 2
Court of the EU – 13 Sept. 2018 No C-26/17
EU ISSUES AND CASES –BIRKENSTOCK v. EUIPO
OVERVIEW OF TOPICS
– U.S. Issues and Cases
Proving Irreparable Harm Continues To Evolve
Blurring The Line In Using Celebrity Names Or Images
Parody Or Infringement - How Funny Does It Need To Be?
U.S. Supreme Court Weighs in on IP Issues
– EU Directive 2015/2436
– EU Issues and Cases
– Brexit
– Australia Issues and Cases
Copyright protection for clothing
Google Ads and trade mark infringement
klgates.com 44
BREXIT –WHAT DOES IT MEAN FOR IP?
– … …
klgates.com 45
BREXIT –WHEN?
klgates.com 46
BREXIT –DESIGNS
– No loss of rights in UK due to Brexit UK registered and unregistered designs Unchanged
EU registered designs Equivalent rights to be created in UK
Pending EU design applications Priority for UK applications
Continuing Unregistered Designs Supplementary Unregistered Designs
– Inability to rely on UK rights in the EU post Brexit
klgates.com 47
BREXIT –DISCLOSURE OF DESIGNS
klgates.com 48
BREXIT –TRADE MARKS
– No loss of rights in UK due to Brexit UK registered and unregistered trade marks Unchanged
EU registered trade marks Equivalent rights to be created in UK
Pending EU trade mark applications Priority for UK applications
– Inability to rely on UK rights in the EU post Brexit
klgates.com 49
BREXIT –ENFORCEMENT/OPPOSITIONS
– UK proceedings based on UK rights Unchanged
– EU proceedings based on EU rights Unchanged
– UK proceedings based on EU rights Will proceed on basis of newly created rights
– EU proceedings based on UK rights Terminated Possibility for new UK proceedings if relevant
– Existing EU wide injunctions will still apply in UK
– New EU wide injunctions from UK Courts or including UK not possible
klgates.com 50
BREXIT –IP AGREEMENTS
– “Future proofing” required
– License Territory – EU, Europe, country list
– Governing law and dispute mechanism
– Diligence existing material settlement and co-existence agreements before Brexit day
– Have Brexit as a live issue for all new agreements and term sheet discussions
klgates.com 51
OVERVIEW OF TOPICS
– U.S. Issues and Cases
Proving Irreparable Harm Continues To Evolve
Blurring The Line In Using Celebrity Names Or Images
Parody Or Infringement - How Funny Does It Need To Be?
U.S. Supreme Court Weighs in on IP Issues
– EU Directive 2015/2436
– EU Issues and Cases
– Brexit
– Australia Issues and Cases
Copyright protection for clothing
Google Ads and trade mark infringement
klgates.com 52
AUSTRALIA ISSUES AND CASES –COPYRIGHT PROTECTION FOR CLOTHING IN AUSTRALIA
– No unregistered design right in Australia– Copyright cannot generally be relied
upon to protect garment cut– Copyright can be relied on to protect
fabric prints & other 2D designs appliedto garments
klgates.com 53
COPYRIGHT PROTECTION FOR CLOTHING IN AUSTRALIA –INFRINGEMENT OF COPYRIGHT
– Works that reproduce the whole or a “substantial part” of a copyright work, without authority, will infringe
– Two elements: Reference/ copying
– Established by evidence of direct copying or inferred if access to the copyright work was possible and designs are similar
Substantial part– Quality rather than the quantity of the part taken – no “safe” amount
to copy– Is the part taken an ‘essential’, ‘material’ or ‘recognisable’ part of the
copyright work?
klgates.com 54
COPYRIGHT PROTECTION FOR CLOTHING IN AUSTRALIA –SEAFOLLY v. FEWSTONE (CITY BEACH)
City Beach found to have infringed copyright in two original Seafolly fabric prints and an embroidery design
klgates.com 55
COPYRIGHT PROTECTION FOR CLOTHING IN AUSTRALIA –PRINTS
Seafolly’s English Rose City Beach’s Rosette/ Rosario
klgates.com 56
Seafolly’s Covent Garden City Beach’s Sienna
COPYRIGHT PROTECTION FOR CLOTHING IN AUSTRALIA –PRINTS
klgates.com 57
COPYRIGHT PROTECTION FOR CLOTHING IN AUSTRALIA –EMBROIDERIES
Seafolly’s Senorita City Beach’s Richelle
klgates.com 58
COPYRIGHT PROTECTION FOR CLOTHING IN AUSTRALIA –FINDINGS
– City Beach infringed copyright in all 3 works
– Ordered to pay damages – AU$250,000– Injunctions – cease making/selling the garments
klgates.com 59
COPYRIGHT PROTECTION FOR CLOTHING IN AUSTRALIA –WHY WAS SEAFOLLY SUCCESSFUL?
– Seafolly kept design files
– Evidence of direct copying by City Beach
– Generous approach to “substantial part” (although many differences)
– Once copying proven, difficult to avoid “substantial part” and infringement
klgates.com 60
AUSTRALIA ISSUES AND CASES –GOOGLE ADWORDS & TRADE MARK INFRINGEMENT
Keyword search
Sourced from: https://www.sharetribe.com/academy/get‐started‐google‐adwords‐marketplace/
klgates.com 61
GOOGLE ADWORDS & TRADE MARK INFRINGEMENT –VEDA ADVANTAGE LTD v. MALOUF GROUP ENTERPRISES (2016)
TM Infringement Not TM Infringement
Use of the trade mark in the text of a sponsored link as a badge of origin andin relation to the same or similar goods/services for which the trade mark is registered
Merely selecting and bidding on a trade mark in Google Ads on its own, or in combination with another word or in any format
Descriptive search terms or descriptive use of a TM
klgates.com 62
GOOGLE ADWORDS & TRADE MARK INFRINGEMENT –ACCC v. TRADING POST AUSTRALIA (2011)
Use of a competitors’ business name as an Adword can constitute misleading and deceptive conduct
– When Internet users conducted a search for “Kloster Ford”, the following sponsored link appeared:
Kloster Ford
www.tradingpost.com.au New/Used Fords – Search 90,000 + auto ads online. Great finds daily!
klgates.com 63
GOOGLE ADWORDS & TRADE MARK INFRINGEMENT –GOOGLE v. ACCC (2013)
– Google itself is not liable– Liability rests with AdWords subscriber
(need to sue subscriber)– Google will no longer remove keywords at trade mark owner’s request
klgates.com 64
GOOGLE ADWORDS & TRADE MARK INFRINGEMENT –KEY TAKEAWAYS
– Conduct regular Google searches of your trade marks– You may use descriptive terms or use a trade mark in a way that is
descriptive – Do not use another’s trade mark (or similar mark) in the Google Ad or
sponsored link of a Google Ad
65klgates.com
PLEASE DO NOT HESITATE TO BE IN TOUCH!
Friederike von Brühl BerlinT +49.(0)[email protected]
Susan KayserWashington DCT [email protected]
Simon CasinaderLondonT +44.(0)[email protected]
Serena TotinoLondonT +44.(0)[email protected]
Anaïs LigotParisT +33.(0)[email protected]
Savannah HardinghamMelbourneT [email protected]
klgates.com 66