An Orrick team was instrumental in securing a favorable ruling from the Paris High Court on behalf of client CoorsTek in ongoing trademark litigation against CeramTec GmbH, a competitor that has been seeking to block the manufacture and sale of CoorsTek’s pink-colored ceramic hip components. The Paris court dismissed CeramTek’s infringement action against CoorsTek in late February in a decision that establishes important precedent for the dispute throughout the European Union.
In siding with CoorsTek, the Paris High Court stated that CeramTec sought to “indefinitely perpetuate the technical effect” of its patent covering its Biolox Delta materials – which expired at the same time CeramTec was filing for its “pink” trademarks – in order to prevent competitors from selling products using the once patented composition. The court found CeramTec’s actions at the time of filing the trademarks were done in bad faith. As a result of the ruling, CeramTec’s EU trademark registrations related to the color pink as applied to ceramic implants are invalid and unenforceable throughout the EU.
This marked the second court decision backing CoorsTek and Orrick legal arguments in important trade dress litigation. Last year, a Colorado federal judge rejected CeramTec’s claims to trade dress rights in the color pink and bid for an injunction that threatened the ability of CoorsTek to sell their pink-colored hip implant components. Orrick served as lead counsel in that case, which ended after an 11-day bench trial.
Partner Peter Vogl leads the Orrick team advising CoorsTek, which is facing similar pending litigation in Germany. In addition to Peter, the Orrick team involved in the Paris High Court matter included partners Lisa Simpson
, Diana Rutowski
and Jordan Coyle, and of counsel Scott Lonardo. Orrick worked closely with Hughes Hubbard and Briggs Wright on the litigation.