Analysis: Case Law - World Trademark Review

Analysis: Case Law

High Court provides guidance on admissibility of new evidence on appeal from registrar

The decision of the High Court of England and Wales in Consolidated Developments Ltd v Cooper demonstrates the relatively restrictive approach which the court takes to the admission of new evidence.

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General Court: CAVE DE TAIN does not evoke PDO 'Cava'

In a decision that provides valuable guidance on the concept of 'evocation' of a PDO, the EU General Court has confirmed that the trademark CAVE DE TAIN, which covers wines in Class 33, was not an evocation of the PDO 'Cava'.

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Louboutin: the interplay of colour and shape

Louboutin’s win before the European Court of Justice shines a light on the complexities of colour marks.

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Mark owners beware: trademarks slipping through the cracks of loose corporate structures and corporate governance

Two recent decisions of the South African Supreme Court of Appeal highlight the dangers to trademark owners, from a proof of use perspective, in not setting up their corporate structures properly.

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TTAB finds sales to single customer, although not substantial, sufficient to avoid abandonment of MOMBACHO for cigars

The US Trademark Trial and Appeal Board has dismissed a petition for cancellation of the mark MOMBACHO for cigars, rejecting the contention that the respondent's meager sales did not qualify as bona fide...

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Intellectual Property Enterprise Court explores limits of extended passing-off doctrine

In a dispute over the use of the term ‘mutual’, the Intellectual Property Enterprise Court in London has dismissed Military Mutual's passing-off claim against Police Mutual.

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Success for Vogue owner as application for figurative V.O.G.U.E. mark is refused

The Croatian IP Office has upheld an opposition filed by Advance Magazine Publishers, the owner of the mark VOGUE GIRL, against the registration of the figurative mark V.O.G.U.E. BY MIRJANA SMOLJO.

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Dispute between Dunlop and Goodyear highlights importance of maintaining control over use of marks

In Dunlop v Goodyear, the Federal Court of Australia has considered a dispute over the use and registration of the mark DUNLOP and the 'flying D' device mark.

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3D shape mark rejected for technical function

The hearing officer has rejected an application to register a 3D mark in the UK based on the shape's technical function, highlighting the clear public interest of preventing the unjustifiable extension of patent rights.

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Coca-Cola victory as Federal Court refuses to register colour green for energy drinks

In opposition proceedings between Coca-Cola and Frucor, the Federal Court of Australia has confirmed that Frucor could not register a particular shade of the colour green as a mark for energy drinks.

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General Court: consumers usually recognise wine by reference to word element

The EU General Court has confirmed that there was a likelihood of confusion between the word mark ANTONIO RUBINI and the earlier figurative mark RUTINI, which both covered wine.

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Why it is very difficult to recover domain name consisting of three-letter acronym under UDRP

A UDRP panel has refused to order the transfer of a domain name consisting of a three-letter acronym without addressing whether the complainant had unregistered trademark rights under the same acronym.

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CJEU dismisses Jägermeister's appeal in RCD application dispute

The decision of the Court of Justice of the European Union in Jägermeister v EUIPO highlights the strict standard in relation to the representation requirements in applications for registered Community designs.

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Court of Appeal upholds criminal sentence for import of counterfeit t-shirts bearing registered trademarks

The Court of Appeal of Zaragoza in Spain has upheld a judgment of the Trial Court in which the latter had sentenced the defendants for importing thousands of counterfeit t-shirts from China.

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Full Federal Court considers nature of appellate review in cases involving evaluative assessments

In Aldi Foods v Moroccanoil, the Full Federal Court of Australia has considered the approach that should be adopted when it is called upon to consider mixed questions of fact and law.

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Beware of RDNH: UDRP panel finds that complainant deliberately filed complaint without proper basis

A UDRP panel has denied the transfer of a domain name that matched the complainant’s trademark and declared that the complaint constituted an abuse of the UDRP proceeding.

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Fifth Circuit: keep your claws off THE KRUSTY KRAB

In a case regarding the Krusty Krab restaurant from SpongeBob SquarePants, the US Court of Appeals for the Fifth Circuit has confirmed that a specific element from a television series can receive trademark protection.

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CJEU's EUIPO v Puma decision: mark owners may rely on earlier decisions as evidence of earlier mark's reputation

The CJEU has found that previous decisions issued by the EUIPO and at national level may be validly relied on as a means of evidence of the reputation of an earlier mark.

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Can ear plugs tune out colour? Bright green colour for ear plugs not functional

In a case involving competing producers of foam ear plugs, the US Court of Appeals for the Ninth Circuit has held that there remained a dispute of material fact as to whether the bright green colour is functional for ear plugs.

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UDRP panel refuses to transfer domain name consisting of common surname

A UDRP panel has refused to order the transfer of a domain name that matched the complainant’s mark because the complainant failed to prove that the respondent registered and used the domain name in bad faith.

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General Court finds likelihood of confusion between FRANCE.COM and French Republic's earlier FRANCE mark

The EU General Court has confirmed that there was a likelihood of confusion between US company Inc’s FRANCE.COM mark and the French Republic’s earlier FRANCE mark.

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Issue 74