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Deliberate misspelling of descriptive mark unlikely to make it distinctive

European Union - In Boehringer Ingelheim International GmbH v OHIM, the General Court has upheld a decision of the Board of Appeal of OHIM rejecting an international registration designating the European Community for the word mark RELY-ABLE for services in Classes 38, 41 and 42. Among other things, the court found that, as the misspelling of the word ‘reliable’ was deliberate and obvious, the relevant public would immediately understand it to mean ‘reliable’. Full text

Use it or lose it - decision provides lessons in how to use a mark in the course of trade

Australia - The decision of the Australian Trademarks Office in Toddler Kindy Gymbaroo Pty Ltd v Gym-Mark Inc gives some clarity as to what is required in order to establish use in the course of trade. Among other things, the delegate highlighted that using a trademark on, or in relation to, a good that is used in the course of operating one’s business is not the same as using a trademark in relation to those goods 'in the course of trade'. Full text

Transfer denied under UDRP for not going by the book

International - In a recent domain name dispute under the UDRP, the panel has provided a noteworthy illustration of the well-established principle that the use of a domain name consisting of dictionary terms may constitute a legitimate use, even if such domain name is identical to a trademark. Full text

Latest blogs

Fans go nuts before cease and desist letter U-turn

International - This week a legal challenge, and its subsequent withdrawal, against a fan-run website dedicated to hazelnut chocolate spread Nutella has been generating media headlines. With the cease and desist letter in question being labelled a ‘routine defence procedure’, the incident highlights the need to carefully weigh enforcement strategies on a case-by-case basis. Read blog
Trevor Little | May 22 2013

Circumstances limit widespread application of AdWords trademark victory

United Kingdom - The High Court of England and Wales has ruled in the long-running AdWords dispute between Interflora and Marks & Spencer (M&S). While finding that M&S’ use of the INTERFLORA mark as an AdWord to advertise its M&S Flowers & Gifts website was trademark infringement, the decision will be limited in its application as the dispute hinged on particular circumstances. Read blog
Trevor Little | May 22 2013

The Dark Knight rises, topples trademark infringement foe

United States - Software company Fortres Grand’s claim that a fictional product appearing in Warner Bros film The Dark Knight Rises infringes on its trademark rights has been dismissed by a Northern District of Indiana court. However, the potential problem of fictional product names that are the same or similar to real-life brand names could arise for any trademark owner and the dispute offers a number of takeaways. Read blog
Jack Ellis | May 21 2013