Analysis: Case Law

OEM and trademark infringement: Supreme People's Court overturns decision recognised as 'model' IP case

In a recent case concerning trademark infringement and OEM, the Supreme People’s Court of China has overturned a decision that it had recognised as one of 50 model IP cases of 2015. 

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Court of Appeals: target consumers' level of attention rules out likelihood of confusion

In a landmark decision, the Turkish Court of Appeals has held that the level of attention of the target consumers plays a significant role in the assessment of the likelihood of confusion.

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Court finds no likelihood of confusion between SIGNIFOR and SIGNASOL in questionable decision

The Swiss Federal Administrative Court has held that there was no likelihood of confusion between the trademarks SIGNIFOR and SIGNASOL for pharmaceutical preparations in Class 5.

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MakeMyTrip accused of stifling competition; injunction in its favour set aside

In Makemytrip v Orbit, the Delhi High Court has set aside an interim injunction granted in favour of MakeMyTrip, finding that the latter was guilty of suppression of facts.

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Despite court's non-infringement ruling, TTAB affirms Section 2(d) refusal of MOAB for automobiles and parts

The US Trademark Trial and Appeal Board has affirmed a Section 2(d) refusal to register the mark MOAB for motor vehicles, finding it likely to cause confusion with MOAB INDUSTRIES for automotive conversion services...

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UDRP proceedings: hedge your bets by demonstrating proof of bad faith

In a recent decision under the UDRP, a WIPO panel has denied the transfer of a domain name consisting of the complainant's mark followed by the name of the country in which the complainant operated.

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General Court: relevant public's perception of mark on filing date is crucial to assess absolute grounds for refusal

The EU General Court's decision in Safe Skies v EUIPO shows that the perception of a mark by the relevant public on the filing date of the application is crucial for the assessment of absolute grounds for...

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Gleissner-related application for ALEXANDER filed in bad faith

An application for UK trademark ALEXANDER has been refused on grounds of bad faith; the decision shows that the wider conduct of the applicant could be relevant to the assessment of whether an application was filed in bad faith.

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'Skyr' found to be descriptive of dairy products; opposition against SKYR BALTAIS rejected

The Estonian Board of Appeal has found that the figurative marks SKYR and SKYR BALTAIS in Class 29 were not similar, as the word ‘Skyr’ has meaning for Estonian consumers.

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CIPRIANI case: are drinks in Class 32 and bar and restaurant services in Class 43 similar?

Hotel Cipriani has successfully opposed the application for the EU trademark CIPRIANI for drinks in Class 32 based on its earlier word mark HOTEL CIPRIANI for bar and restaurant services in Class 43.

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UDRP complaint fails on all three requirements; found to be attempt at RDNH

In a recent decision under the UDRP, a three-member WIPO panel not only denied the transfer of the domain name ‘ktg.com’, failing it on all three requirements, but also found reverse domain name hijacking.

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Despite podcast's popularity, SERIAL trademark registration denied as generic

The US Trademark Trial and Appeal Board has ruled that 'serial' is generic for a multi-instalment audio programme and cannot be registered as a trademark.

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Joint ownership and exclusive rights: Supreme Court issues decision in ANTUMANAL case

The Chilean Supreme Court has upheld the dismissal of complaints against the jointly-owned trademark ANTUMANAL, ruling out bad faith on the part of the defendant.

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Advocate general considers use of trademarks in calls for tenders

The EU advocate general has given his opinion in VAR v Iveco. Although the case concerned the interpretation of Directive 2004/17 on public procurement, the entire case rests on a trademark issue.

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New grace period for non-use? Court finds that Association Agreement should have direct effect

The Kiev Commercial Court has held that the Association Agreement between the European Union and Ukraine, which provides for a five-year grace period for non-use, shall apply with direct effect.

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ECJ delivers blow to mobile.de: cancellation proceedings against MOBILE.DE can resume

Following a decision of the Court of Justice of the European Union, the long-running cancellation proceedings between mobile.de GmbH and Rezon OOD can now continue before the Cancellation Division of the EUIPO.

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Can title of creative work benefit from trademark protection?

In Roemmers v Diamond Films, Argentina's Court of Appeals has upheld the refusal to grant a preliminary injunction against the use of “Una razón para vivir” as a film title.

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Court of Appeal: initial interest confusion in internet search results allowable

In National Mini Storage Limited v National Storage Limited, the New Zealand Court of Appeal appears to have allowed initial interest confusion to occur in search engine results.

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Heavy blow for Crocs: General Court confirms cancellation of clog design

In Crocs Inc v EUIPO, the EU General Court has confirmed the cancellation of Crocs Inc’s famous clog design, finding that it had been made available to the public before its registration.

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Does mere use confer protection? High Court provides answer

Following the decision of Kenya's High Court in Fibrelink Limited v Star Television Production, prior use of a similar mark is now sufficient grounds for an opposition.

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Victory for Red Bull: IBEX figurative mark rejected on appeal

The Re-examination and Evaluation Board of the Turkish Patent and Trademark Office has found that the figurative mark IBEX was confusingly similar to the earlier figurative mark RED BULL.

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Issue 72