Thompson Compumark 2016

Legal updates

10 Feb 2016

Complaint for three-letter domain fails

International - A recent UDRP decision highlights that the omission of evidence will not be viewed lightly and could lead to a finding of reverse domain name hijacking, even if the respondent does not actually request this. It further demonstrates that it may also be extremely difficult to prove that a respondent was targeting a particular trademark owner when a domain name is very short. Read update

10 Feb 2016

No break for Nestlé as high threshold is confirmed for proving acquired distinctiveness

United Kingdom - In Nestlé v Cadbury the High Court dismissed Nestlé’s appeal against the registrar of trademarks’ refusal to register the shape of a Kit Kat chocolate bar following an analysis of the European Court of Justice ruling on the applicable test for proving acquired distinctiveness. Read update

08 Feb 2016

No life in appeal of VITA+VERDE application before General Court

European Union - A recent General Court ruling which upheld a decision of the Office for Harmonisation in the Internal Market’s Second Board of Appeal to refuse registration of the mark VITA+VERDE reinforces a number of existing principles in relation to the assessment of a likelihood of confusion. Read update

08 Feb 2016

TODO BIEN mark not distinctive, but does not take unfair advantage of Valderrama’s reputation

Colombia - Famous Colombian football player Carlos ‘el Pibe’ Valderrama filed an opposition against the application to register the trademark TODO BIEN for “Soft drinks and energizing drinks” in Class 32. Read update

05 Feb 2016

Trademark owners benefit from new Civil Procedure Rules

Greece - The new Civil Procedure Rules have significantly expedited trademark infringement proceedings by setting stricter, more clearly defined timeframes; reducing the number of cases in which witnesses are heard in court; and restricting the opportunity to obtain postponements without genuinely good cause. Read update

05 Feb 2016

Parody trumps confusion and dilution – again

United States - My Other Bag, Inc has successfully invoked the parody defence in a claim for federal dilution, federal and state trademark infringement and copyright infringement brought against it by Louis Vuitton. The court concluded that in some cases it is better to accept the implied compliment in a parody and to smile or laugh than it is to sue. Read update


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Issue 59