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    More blogsRecent blogs

    Fans go nuts before cease and desist letter U-turn

    This week a legal challenge, and its subsequent withdrawal, against a fan-run website dedicated to hazelnut chocolate spread Nutella has been generating media headlines. With the cease and desist letter in question being labelled a ‘routine defence procedure’, the incident highlights the need to carefully weigh enforcement strategies on a case-by-case basis. Read blog
    May 22 2013


    Circumstances limit widespread application of AdWords trademark victory

    The High Court of England and Wales has ruled in the long-running AdWords dispute between Interflora and Marks & Spencer (M&S). While finding that M&S’ use of the INTERFLORA mark as an AdWord to advertise its M&S Flowers & Gifts website was trademark infringement, the decision will be limited in its application as the dispute hinged on particular circumstances. Read blog
    May 22 2013


    The Dark Knight rises, topples trademark infringement foe

    Software company Fortres Grand’s claim that a fictional product appearing in Warner Bros film The Dark Knight Rises infringes on its trademark rights has been dismissed by a Northern District of Indiana court. However, the potential problem of fictional product names that are the same or similar to real-life brand names could arise for any trademark owner and the dispute offers a number of takeaways. Read blog
    May 21 2013

    More updatesUpdates

    European Union

    Deliberate misspelling of descriptive mark unlikely to make it distinctive

    In Boehringer Ingelheim International GmbH v OHIM, the General Court has upheld a decision of the Board of Appeal of OHIM rejecting an international registration designating the European Community for the word mark RELY-ABLE for services in Classes 38, 41 and 42. Among other things, the court found that, as the misspelling of the word ‘reliable’ was deliberate and obvious, the relevant public would immediately understand it to mean ‘reliable’. Full text
    May 22 2013


    Australia

    Use it or lose it - decision provides lessons in how to use a mark in the course of trade

    The decision of the Australian Trademarks Office in Toddler Kindy Gymbaroo Pty Ltd v Gym-Mark Inc gives some clarity as to what is required in order to establish use in the course of trade. Among other things, the delegate highlighted that using a trademark on, or in relation to, a good that is used in the course of operating one’s business is not the same as using a trademark in relation to those goods 'in the course of trade'. Full text
    May 22 2013


    International

    Transfer denied under UDRP for not going by the book

    In a recent domain name dispute under the UDRP, the panel has provided a noteworthy illustration of the well-established principle that the use of a domain name consisting of dictionary terms may constitute a legitimate use, even if such domain name is identical to a trademark. Full text
    May 22 2013


    International

    TMCH gets its first .jobs

    Employ Media LLC, which operates the sponsored top-level domain ‘.jobs’, has announced its intention to liberalise the ‘.jobs’ sTLD. Employ Media has elected to use the Trademark Clearinghouse to support the sunrise period and, therefore, this will be the first test of the TMCH systems and process on an actual live TLD. Full text
    May 21 2013


    United States

    Apple defeats infringement claims in IBOOKS case

    In JT Colby & Company Inc v Apple Inc, Apple has defeated claims that its IBOOKS mark for e-reader software infringed the plaintiffs’ common law rights in the mark IBOOKS for use with a publishing imprint. The case is instructive in showing the value of a federal registration and/or having strong protectable rights before embarking on an infringement case. Full text
    May 21 2013


    Romania

    Court of Appeal of Bucharest issues decision in RCD case

    In Sertic Vanja v SC Look Media Advertising SRL, the Court of Appeal of Bucharest has upheld a decision of the High Court of Bucharest in a case involving registered Community designs. The decision is interesting as a precedent with respect to rights acquired after the filing of a court action. Full text
    May 21 2013