2014 IP CompuMark
IPBC Asia 2014

Legal updates

23 Sep 2014

Federal Court: protection for official marks may end with dissolution of owner

Canada - In TCC Holdings Inc v The Families as Support Teams Society, the Federal Court has suggested that the protection for an official mark may end with its owner. The court’s remarks are notable as they reflect a broader shift within the Canadian legal environment with respect to official marks. Read update

23 Sep 2014

Sky fails to prevent registration of mark containing 'sky' element

Ireland - In Stone Electrical Limited v British Sky Broadcasting Group PLC, the hearing officer has dismissed Sky’s opposition against the registration of the figurative mark SKYVOLT in Classes 7, 9 and 37 based on its SKY marks. Among other things, the hearing officer held that the level of similarity between the parties’ marks was not sufficient to cause the relevant public to establish a link or connection in trade between the marks. Read update

23 Sep 2014

Continuous use protects expired trademarks

Turkey - Article 8 of the Trademark Decree-Law No 556 states that a trademark application that is identical or similar to an expired trademark should be rejected upon opposition if the earlier trademark expired during the two-year period preceding the date of the new application. However, in light of a recent decision of the TPI, it seems that a trademark may still be protected after the two-year period has passed if the expired mark is still in use. Read update

22 Sep 2014

General Court confirms that chocolate cookie design is invalid

European Union - In Biscuits Poult SAS v OHIM, the General Court has upheld a decision of the Third Board of Appeal of OHIM finding that a registered Community design representing a chocolate cookie was invalid as it lacked individual character. Among other things, the court agreed with the board that the non-visible characteristics of the product, which do not relate to its appearance, could not be taken into account in the determination of whether the design could be protected. Read update

22 Sep 2014

Flea market owner potentially liable for contributory infringement

United States - In Coach Inc v Sapatis, a district court has denied summary judgment to the owner, manager and sole member of the limited liability corporation that owns and operates a New Hampshire flea market. Among other things, the court found that the owner’s personal contributory liability depended on her own knowledge and control over the vendors’ alleged infringement, regardless of whether her actions or omissions were taken in an official or personal capacity. Read update

22 Sep 2014

Supreme Court considers use of own family name as trademark

India - In Precious Jewels v Varun Gems, the Supreme Court has examined the permissible scope of use of one's own name as a trademark under Section 35 of the Trademarks Act 1999. The dispute concerned the use by the parties of their common family name, Rakyan, as a trade name for their respective jewellery businesses. By setting aside the injunction granted in favour of Varun Gems, the court departed from established practice. Read update


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