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Legal updates

France
SIMPLY and SIMPLY MARKET held to be descriptive terms
In an April 14 2016 decision a French court of first instance held that Auchan’s Community Trademarks SIMPLY and SIMPLY MARKET were descriptive terms and therefore invalid and rejected Auchan’s unfair competition claim against Marks & Spencer. It also clarified the scope of counterclaims for invalidity.
Canada
New trademark fees consultation
On June 6 2016 the Canadian Intellectual Property Office released for consultation the Fee-for-Service Proposal – Trademarks, which outlines proposed changes to the fees associated with filing and registering trademarks, and renewing trademark registrations, in Canada. The consultation period ends on July 5 2016.
United Arab Emirates
Protection of a well-known trademark
An important judgment was recently issued in the United Arab Emirates relating to a well-known trademark. The judgment effectively excludes well-known trademarks from the time bar cancellation, which currently stands at five years.

Blog

29 Jun 2016
Supreme People’s Court links damages to trademark fame in “very positive” Michelin decision
China’s highest court has ruled that the fame of an infringed trademark should come into consideration when determining damages, with lower courts expected to follow suit. The decision looks to be a positive one for brand owners seeking higher damages in cases where it seems likely that flagrant copying has taken place.
28 Jun 2016
Comodo spat shows importance of effective PR around trademark strategies
An internet security company’s trademark filings for the brand name of a rival organisation has caused an uproar in the technology community. While the company has now abandoned the applications, the PR storm surrounding the initial filings – exacerbated by its CEO”s “patronising” comments on the company’s public message board – demonstrates the need for effective messaging around trademark strategies.
28 Jun 2016
Call for IP innovation push; INTA open to Annual Meeting ‘legal tech startup fair’
The CEO of a leading IP technology company has told World Trademark Review that the trademark community – including law firms and associations – should do more to offer support to IP startups, which face an increasingly difficult funding environment in the legal space. In response, INTA has confirmed that it is considering an “IP startup fair” at future INTA Annual Meetings.

Explore the current issue

Manufacturing infringement: the OEM conundrum

Recent developments have yet to provide clarification on the judicial treatment of trademark infringement and use in the original equipment manufacturing business model
Davide Follador reports

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