Olivares’ TM

Legal updates

07 Oct 2015

Dell prevents registration of LEXDELL for certain goods and services

European Union - In Dellmeier v OHIM, the General Court has confirmed a decision of the Board of Appeal of OHIM upholding an opposition by Dell Inc, the owner of the mark DELL, against the registration of LEXDELL for certain goods and services in Classes 16, 25, 41 and 45 based on Articles 8(1)(b) and 8(5) of the Community Trademark Regulation. The decision highlights the strong protection conferred to trademarks with a reputation in the European Union. Read update

07 Oct 2015

Lafarge stops pre-emptive registration based on prior trade name

China - The Trademark Office has refused to register the trademarks LAFARGE (in Chinese characters) and LAFARGE (in Latin characters) for Class 3 goods based on Lafarge Société Anonyme’s prior trade name rights. Among other things, the Trademark Office held that the evidence provided by Lafarge proved that the trade name Lafarge, in Chinese and Latin characters, had a high reputation among the relevant consumers. Read update

07 Oct 2015

UDRP panel at odds on reverse domain name hijacking

International - In a recent decision under the UDRP, a WIPO three-member panel has denied the transfer of the domain name ‘modway.com’ to the owner of the trademark MODWAY, holding, among other things, that “a mere renewal of a domain name has not generally been treated as a new registration for the purpose of assessing bad faith”. However, the panellists dissented on the issue of reverse domain name hijacking. Read update

06 Oct 2015

OHIM rebuked for not examining distinctiveness of mark in cancellation action

European Union - In Bundesverband Deutsche Tafel eV v OHIM, the General Court has annulled a decision of the Fourth Board of Appeal of OHIM in which the latter had declared that the mark TAFEL was invalid for services in Classes 39 and 45. Among other things, the court found that the board had erred in stating that, because the mark was descriptive, it was automatically devoid of distinctive character. The board should have examined the distinctive character of the mark separately. Read update

06 Oct 2015

TTAB finds confusion between Winebud wine and Bud beer

United States - In Anheuser-Busch LLC v Innvopak Systems Pty Ltd, the TTAB has found that the applicant’s mark WINEBUD for wine was confusingly similar to Anheuser-Busch’s BUD mark. The TTAB found that the mark BUD was famous for beer and that consumers were likely to think that WINEBUD-branded wine is produced by the makers of Bud beer. Read update

06 Oct 2015

UDRP complainant fails to prove that domain name was registered for its trademark value

International - In a recent decision under the UDRP, a WIPO panel has denied the transfer of a domain name confusingly similar to a trademark for failure to prove that it was registered for its trademark value, as opposed to its generic or descriptive value. The case shows that, where domain names consist of dictionary terms, a complainant has a higher burden to prove that the respondent lacks rights or legitimate interests and/or registered and used the domain name in bad faith. Read update


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Issue 57