NPE 2015

Legal updates

26 Jan 2015

Figurative elements found to be insufficient to render mark distinctive

European Union - In Research and Production Company “Melt Water” UAB v OHIM, the General Court has upheld a decision of the Fifth Board of Appeal of OHIM finding that the figurative mark MELT WATER ORIGINAL was descriptive of Class 32 goods. Among other things, the court agreed with the board that the figurative elements of the mark were neither strongly pronounced nor distinctive. Read update

26 Jan 2015

'.ca' domain name decision illustrates useful tool for demonstrating bad faith

Canada - The recent CDRP decision in Optrex Limited v Nameshield Inc provides a useful reminder that '.ca' domain names registered in bad faith are subject to transfer by way of a process similar to a proceeding under the UDRP. The decision also illustrates useful tools for brand owners which are unique to CDRP proceedings. Read update

26 Jan 2015

Mattel partially successful in 'Monster Doll' case

Spain - Section 8 of the Alicante Court of Appeal, in its capacity as the CTM Court of Appeal, has partially upheld Mattel’s claims in an action for trademark and design infringement and unfair competition against Erjutoys SL. Mattel, the owner of two well-known MONSTER HIGH marks and two RCDs for ‘gothic-look’ dolls, objected to Erjutoys’ use of the name ‘Monster Doll’ for similar dolls. Read update

23 Jan 2015

eBay obtains transfer of thousands of domain names under UDRP

International - eBay has succeeded in securing the transfer of thousands of domain names comprising the well-known EBAY mark, followed by a number and a generic top-level domain, under the UDRP. The domain names were registered by Chinese individuals who had used a privacy service to conceal their identities. The decision shows that the UDRP can be applied to resolve even the largest and most procedurally complex cybersquatting cases. Read update

23 Jan 2015

First Amendment protects use of third-party's trademark in video game

United States - In Mil-Spec Monkey Inc v Activision Blizzard Inc, a California district court has confirmed that video games, including customisable multi-player games, qualify as expressive works entitled to First Amendment protection. The court granted summary judgment in favour of a video game publisher on trademark infringement claims brought by the owner of a trademarked military patch design. Read update

23 Jan 2015

Validity of plaintiff's trademark registration can be questioned at interlocutory stage

India - In Lupin Limited v Johnson & Johnson, the Full Bench of the Bombay High Court has held that the court can consider the question of the validity of a registered trademark at the interlocutory stage if the registration is ex facie illegal, fraudulent or shocks the conscience of the court. The decision represents a U-turn in the court’s position in this respect. Read update


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