More blogsRecent blogs
Fans go nuts before cease and desist letter U-turn
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.
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May 22 2013
Circumstances limit widespread application of AdWords trademark victory
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.
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May 22 2013
The Dark Knight rises, topples trademark infringement foe
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.
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May 21 2013
More updatesUpdates
Deliberate misspelling of descriptive mark unlikely to make it distinctive
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’.
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May 22 2013
Australia
Use it or lose it - decision provides lessons in how to use a mark in the course of trade
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'.
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May 22 2013
International
Transfer denied under UDRP for not going by the book
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.
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May 22 2013
International
TMCH gets its first .jobs
Employ Media LLC, which operates the sponsored top-level domain ‘.jobs’, has announced its intention to liberalise the ‘.jobs’ sTLD. Employ Media has elected to use the Trademark Clearinghouse to support the sunrise period and, therefore, this will be the first test of the TMCH systems and process on an actual live TLD.
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May 21 2013
United States
Apple defeats infringement claims in IBOOKS case
In JT Colby & Company Inc v Apple Inc, Apple has defeated claims that its IBOOKS mark for e-reader software infringed the plaintiffs’ common law rights in the mark IBOOKS for use with a publishing imprint. The case is instructive in showing the value of a federal registration and/or having strong protectable rights before embarking on an infringement case.
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May 21 2013
Romania
Court of Appeal of Bucharest issues decision in RCD case
In Sertic Vanja v SC Look Media Advertising SRL, the Court of Appeal of Bucharest has upheld a decision of the High Court of Bucharest in a case involving registered Community designs. The decision is interesting as a precedent with respect to rights acquired after the filing of a court action.
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May 21 2013
