International Amicus Committee

Provides expertise concerning trademark and other IP-related laws to courts and trademark offices around the world through the submission of amicus curiae (“friend of the court”) briefs or similar filings. Work includes advocating for acceptance of amicus briefs, evaluation of requests to file, monitoring leading cases, and drafting of submissions, often on a tight deadline.

Committee members: Please log in to access INTAcollaborate, our committee management tool.

Highlights

Cases and Requests Needed

Please help the IAC identify key cases at the appellate level which impact trademark law in your country or region, especially outside North America and Europe. To submit an amicus request, please see INTA’s policies and procedures.

Recent Cases

Case C-421/20 ACACIA S.R.L v. Bayerische Motoren Werke Aktiengesellschaft
Court: Court of Justice of the European Union (CJEU)

The applicable law to the supplementary remedies/sanctions requested in a case dealing with Registered Community Designs (RCD) should be either lex fori or the place where the act of infringement took place, i.e., where there was illegal use of the RCD, unless there are disputed actions of multiple infringements in many European Union countries.

Case R 1304/2020-G, Der Grüne Punkt Duales System Deutschland GmbH ./. Halston Properties, s.r.o. GmbH
Tribunal: Grand Board of Appeal of the European Union Intellectual Property Office

Where a trademark indicates aspects regarding the disposal of the packaging of the marketed goods, the trademark can be genuinely used for the various packaged goods because it will allow the consumer to choose between an undertaking that—being part of the association that owns the trademark—has a certain system in place allowing for disposal of the packaging of the respective goods vs. undertakings that do not have such a system in place

VIP Products, LLC V. Jack Daniel’s Property, Inc.
Court: United States Court of Appeal for the Ninth Circuit

INTA Position: The Court should grant Jack Daniel’s Property’s petition for rehearing or rehearing en banc.as the panel’s decision in this case improperly extends Rogers v. Grimaldi to the use of trademarks on any commercial good arguably having some “expressive” quality.

UNITED STATES PATENT AND TRADEMARK OFFICE v. BOOKING.COM B.V..
Court: U.S. Supreme Court

INTA Position: The Court should consider survey evidence when deciding whether a mark is generic or descriptive and should not be limited to cases involving “coined” terms. Furthermore, the Court should affirm that there is no per se rule for the protectability of generic marks with addition by an online business of a generic top-level domain (‘.com’).

LTTB LLC V. REDBUBBLE INC.
Court: United States Court of Appeal for the Ninth Circuit

INTA Position: The Court should reverse and remand the case to the district court to reconsider its decision in view of the district court’s incorrect holding regarding the legal standard for and misapplication of the doctrine of aesthetic functionality.