Legal updates

17 Feb 2017

Evidence of family of marks can be used to prove acquired distinctiveness of new member of family

United States - In In re LC Trademarks Inc, the TTAB has held that an applicant’s evidence of a family of marks can be used to help prove acquired distinctiveness for a new member of that family. However, the TTAB found that the applicant for the registration of the mark DEEP!DEEP! DISH PIZZA for pizza had failed to provide sufficient evidence to do so. Read update

17 Feb 2017

Moscow Arbitration Court issues unexpected decision in domain name case

Russia - The Moscow Arbitration Court has dismissed an infringement action filed by OSRAM GmbH, the owner of the international mark LEDVANCE, regarding the domain name '' because the limitation period had expired. Surprisingly, the court found that OSRAM should have searched the directory of '.ru' domain names between December 2010 and December 2013 and that, by not filing an infringement action within that period, it had lost the right to seek protection in court. Read update

16 Feb 2017

Phonetic similarity sufficient to create likelihood of confusion where goods are ordered orally

European Union - In Stock Polska sp zoo v EUIPO, the General Court has upheld a decision of the Fifth Board of Appeal of the EUIPO finding that there was a likelihood of confusion between the figurative mark LUBELSKA and the word mark LUBECA for alcoholic beverages. Among other things, the court held that, when the goods concerned are ordered verbally for consumption in bars, restaurants or nightclubs, the phonetic similarity between the marks is, by itself, sufficient to give rise to a likelihood of confusion. Read update

16 Feb 2017

Implementation of opposition proceedings - an update almost six months on

Mexico - On August 29 2016 opposition proceedings became available in Mexico. Almost six months on, this update considers how opposition proceedings have been implemented by IMPI. It is expected that the first trademark applications against which oppositions have been filed will receive a final resolution from IMPI by late 2017. Read update

15 Feb 2017

WIPO panel finds that neither registration nor transfer of domain name was clearly made in bad faith

International - A panel from the WIPO Arbitration and Mediation Centre has denied the transfer under the UDRP of the domain name ‘’ to the owners of the mark HOOOKED. Among other things, the panel found that there was no evidence to suggest that the original registrant and the new underlying registrant were connected and that the change of ownership was made to try and frustrate the UDRP. Read update

15 Feb 2017

Administrative Court confirms refusal of 2D mark claiming the colour pink for Class 10 goods

Switzerland - The Administrative Court has dismissed an appeal by CeramTec GmbH, a German manufacturer of high-performance ceramics, against a decision of the FIIP refusing protection to a 2D mark claiming the colour pink for prostheses in Class 10. Among other things, the court held that, although CeramTec had established that no other manufacturer of prostheses used the colour pink, the colour pink itself was not sufficient to render the mark distinctive. Read update


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Issue 65