Legal updates

24 Feb 2017

Lawyers' dispute highlights that copyrights cannot override trademark rights

Indonesia - In the dispute between the Indonesia Lawyers Association and the Indonesia Lawyers Union, which both used the same logo and the name PERADIN, the Supreme Court has upheld a lower court decision finding that the union had infringed the association's PERADIN mark. Indonesian infringers often register and cite copyrights to justify the use of similar marks; however, this case clearly shows that copyrights cannot override trademark rights. Read update

24 Feb 2017

ECJ rules on repackaging of parallel-imported medicinal products

European Union - In Ferring Lægemidler A/S v Orifarm A/S, a reference for a preliminary ruling from the Danish Maritime and Commercial Court, the ECJ has ruled again on the conditions a parallel importer must meet in order to show that it is 'necessary' to repackage medicinal products for sale in the country of import. Read update

23 Feb 2017

Federal Court finds that SIGNATURE marks for wine are not deceptively similar

Australia - In Samuel Smith & Son Pty Ltd v Pernod Ricard Winemakers Pty Ltd, Samuel Smith has failed in its attempt to stop Pernod Ricard from selling wine bearing the BAROSSA SIGNATURE mark on the basis that it infringed its THE SIGNATURE trademark registration. The case highlights that individual descriptive words can function as a trademark when combined together, and that a sub-brand, when used in conjunction with a house mark, can still function as a separate trademark. Read update

23 Feb 2017

Federal Circuit instructs TTAB to revisit software services as evidence of use

United States - In In re JobDiva Inc, the Federal Circuit has reviewed the extent to which certain services can be rendered through related computer software services. The court examined whether the trademark owner used its marks in commerce in connection with “personnel placement and recruitment services”, or whether it had failed to use the marks in connection with services because its use was only in connection with software offerings. Read update

22 Feb 2017

Supreme Court: defendant acted in bad faith when registering mark identical to appellant's foreign mark

Iceland - In Samba LLC v Sushisamba ehf, the Supreme Court has upheld Samba LLC’s claim for the cancellation of Sushisamba ehf’s registration for the mark SUSHISAMBA. Among other things, the Supreme Court found that Samba LLC had proved beyond doubt that Sushisamba ehf knew or should have known of the existence of Samba LLC's foreign mark when it registered its own mark, and had acted in bad faith under Article 14, Paragraph 1, Item 9 of the Trademarks Act. Read update

22 Feb 2017

General Court confirms likelihood of confusion between marks containing 'alpha' for Class 5 goods

European Union - In Opko 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 marks ALPHAREN and ALPHA D3 for Class 5 goods. Among other things, the court found that, notwithstanding the relevant consumers' higher-than-average level of attention, the coincidence of the element 'alpha' had a significant impact on the perception of the marks on the part of those consumers. Read update

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Issue 65