Analysis: Case Law

No fan site for tribute band: use of mark in domain name created implied affiliation with complainant

A WIPO panel has ordered the transfer under the UDRP of a domain name that matched the name of a famous pop group and belonged to a tribute band.

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JOY fails to prevent registration of HISPANITAS JOY IS A CHOICE despite enhanced distinctive character

In Jean Patou Worldwide v EUIPO, the General Court has confirmed that there was no likelihood of confusion between the figurative mark HISPANITAS JOY IS A CHOICE and the earlier mark JOY for “perfumes” in Class 3.

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Why it is critical to provide sufficient evidence under ADR procedures for '.fr' domain names

In a decision under the Syreli alternative dispute resolution procedure, a college from AFNIC has denied the transfer of a domain name consisting of the name of the complainant under ‘.fr’ due to lack of evidence.

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Slight change in defendant's registered mark found to infringe claimant's mark; court awards Rmb3 million in damages

A Chinese court has found that the registered trademark 了M, as used by its owner, did not constitute "standard use" of the registered trademark and infringed 3M Company’s registered trademark 3M.

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Supreme Court of Appeal's CLEARVU decision: a clearer view of disclaimers and admissions?

In Cochrane Steel v M-Systems, which concerned the trademark CLEARVU, the Supreme Court of Appeal has considered the effect of disclaimers and admissions in South African trademark law.

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ECJ: no time limit for production of evidence in invalidation proceedings based on absolute grounds

In EUIPO v European Food, the ECJ found that there are no time limits for the production of evidence in the context of an application for a declaration of invalidity based on absolute grounds.

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“A steep uphill battle”: experts pessimistic over USPTO bid for U-turn on scandalous marks

The USPTO has filed a petition for a rehearing en banc in In re: Brunetti, an effort to maintain a ban on scandalous marks. Legal experts are sceptical about the move, telling us that the government faces an “uphill battle” to reverse...

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Federal Circuit bleeps Lanham Act ban on immoral or scandalous marks

In In re: Brunetti, the Federal Circuit has reversed the TTAB's finding that the mark FUCT as used in connection with various apparel items was unregistrable under Section 2(a) of the Lanham Act.

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General Court confirms rejection of FACK JU GÖHTE; rare application of Article 7(1)(f)

In Constantin Film Produktion GmbH v EUIPO, the General Court has upheld a decision of the EUIPO rejecting an application for the mark FACK JU GÖHTE for a wide range of goods and services under Article 7(1)(f) of Regulation 207/2009.

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UDRP panel finds RDNH; complainants should disclose all prior dealings with respondent

A UDRP panel has denied the transfer of ‘modz.com’ to the owner of the mark MODZ, and also made a finding of reverse domain name hijacking for failure to disclose prior communications with the respondent.

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Good news for parallel importers: mark owners cannot prohibit import of authentic goods

The Moscow Arbitration Court has held that right holders cannot prohibit the importation of authentic products, even if the goods are imported by unauthorised distributors.

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General Court follows holistic approach to evidence of use; dangers of Article 128(7) highlighted

In Deichmann v EUIPO, the General Court has confirmed that there had been genuine use of a figurative mark for sports shoes, even though the mark as used was not identical to the mark as registered.

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Why the authorities are taking a tougher stance on trademark infringement in the Chinese food industry

Recent criminal cases involving fake food labels have highlighted the tough stance taken by the authorities in counterfeit food cases.

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General Court's METAPORN decision: why adult entertainment and telecommunication services are similar

In Sun Media Ltd v EUIPO, the General Court has confirmed that there was a likelihood of confusion between the mark METAPORN and earlier META4 marks.

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General Court's SWISSGEAR decision: a useful reminder of the legal principles surrounding Articles 7(1)(b) and (c)

In Wenger SA v EUIPO, the General Court has upheld the decision of the EUIPO to invalidate the mark SWISSGEAR for a wide range of goods.

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Apex court: TDOs may declare that goods are imitations

The Federal Court has considered the meaning and significance of Section 9 of the new Trade Descriptions Act 2011.

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General Court confirms that DUAL EDGE is descriptive for Class 9 goods

In LG Electronics, Inc v EUIPO, the General Court has confirmed that DUAL EDGE is descriptive and lacks distinctive character for mobile phones and related goods.

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New York court issues decision in bottle dispute

In Can’t Live Without It LLC v ETS Express Inc, a federal court has granted a partial summary judgment in a trade dress infringement and unfair competition case involving an alleged knock-off bottle.

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Beijing IP Court decides first GUI infringement case

The Beijing IP Court has issued its decision in the first GUI infringement case in China, in a battle between two anti-virus software giants.

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TTAB grants motion for summary judgment as to fraud counterclaim

In Kastle Systems v Lee Strategy Group, the TTAB has granted the opponent’s motion for summary judgment, dismissing the applicant's fraud counterclaim.

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Polo/Lauren Company fails to invalidate 'polo player' mark

The Polo/Lauren Company has failed to invalidate the Royal County of Berkshire Polo Club's registration for a composite mark containing the word 'polo' and the device of a polo player.

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Issue 71