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Legal updates

European Union
Figurative 'T' marks held to be confusingly similar
In Tifosi Optics Inc v OHIM, the General Court has upheld a decision of the Second Board of Appeal of OHIM in which the latter had found that there was a likelihood of confusion between two figurative signs consisting of the letter ‘T’ surrounded by an oval. The court agreed with the board that the goods covered by the marks were either similar or identical, and that the marks were visually similar and aurally and conceptually identical.
Spain
Court rules on use of third-party trademarks as AdWords
The Barcelona Commercial Court Number 2 has dismissed Fotoprix’s trademark infringement and unfair competition action against Vistaprint, and upheld Vistaprint’s counterclaim for a declaration of partial invalidity and partial cancellation of Fotoprix’s FOTOLIBRO mark. Among other things, the court referred to the ECJ’s decision in Google France to decide whether Vistaprint’s use of Fotoprix’s marks as AdWords amounted to infringement.
Turkey
TPI softens its approach to registration of 3D marks
Following two recent cases involving 3D marks consisting of bottle shapes, it seems that the Turkish Patent Institute has softened its approach to the registrability of 3D shape marks. The cases suggest that, even if a 3D mark is rejected following the initial examination, it is still possible to overcome such refusal by filing an appeal to the High Board of the TPI, without necessarily having to challenge the decision before the specialised IP courts.

Blog

29 Oct 2014
EFF gives trademark procedures the thumbs up, but picture not a complete one

The Electronic Frontier Foundation (EFF) has published research assessing how a range of major online platforms treat trademark complaints. While the overall results were positive, the picture remains incomplete and – absent additional data – means that the trademark bullying narrative continues. The EFF is a non-profit organisation dedicated to defending civil liberties in the...

28 Oct 2014
Call for app store operators to deal with repeat offenders automatically

A federal complaint filed by an app developer against Google focuses on the whack-a-mole phenomenon as it relates to trademark infringement in the app store environment. New York-based attorney Michael A. Freeman, who is representing the app developer, tells World Trademark Review that more needs to be done when operators are aware of repeated trademark infringements related to a particular...

28 Oct 2014
OHIM announces go-live date for fast-track CTMs, gets tougher on payments

OHIM has announced that the fast-track processing of Community trademark applications (CTMs) will be available from November 24. On that day, whether choosing fast track or the regular route to publication, a change that applies to all CTM applicants will also take place. OHIM’s current ‘fast-track’ design option allows for registration of Community designs within two...

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October 29

An app developer is suing Google for issues relating to how it deals with trademark infringements on Google Play. http://t.co/ACCJRaVlRc

October 29

OHIM has announced the go-live date for fast-track CTM and a tougher stance on payments. http://t.co/C6tXfLRa85

October 29

The @EFF has published new research assessing how a range of major online platforms treat trademark complaints. http://t.co/p0O7TXpajU

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