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Legal updates

16 Sep 2014

Gucci's international GG marks revoked in Benelux following 'harsh' decision

Belgium - The Commercial Court of Brussels has ordered the revocation of Gucci’s international registrations for its GG mark in the Benelux on the ground of non-use. The court dismissed Gucci’s claim that use of its CTM could be considered as use of its international marks, finding that the CTM was not a modernised version of the international registrations. In view of previous EU and Belgian case law, this decision seems harsh. Read update

16 Sep 2014

Federal Circuit: no "correct" pronunciation for marks that are unrecognised words

United States - In StonCor Group Inc v Specialty Coatings Inc, the US Court of Appeals for the Federal Circuit has affirmed a TTAB decision finding no likelihood of confusion between the trademarks STONSHIELD and ARMORSTONE. However, the Federal Circuit cautioned that the TTAB had improperly forced a pronunciation of the appellant’s mark that was unsupported by evidence. Read update

16 Sep 2014

Court of Appeal upholds trademark infringement claim against former distributor

Iran - The Court of Appeal has upheld a decision of the Court of First Instance in which the latter had ruled that the trademark KINSMART should be cancelled on the ground that it had been registered in bad faith by a former distributor of the plaintiff. The plaintiff, the owner of the trademark KINSMART for diecast scale model cars in several countries, had neglected to register the mark in Iran. Read update

15 Sep 2014

Unprecedented amount of statutory damages for trademark infringement awarded

Singapore - In Converse Inc v Ramchandani, the High Court has awarded Converse an unprecedented sum of S$100,000 - the maximum amount of statutory damages under Section 31(5) of the Trademarks Act - for infringement of its CONVERSE mark. There seems to be an inherent tension in the decision: on the one hand, it requires plaintiffs to adduce sufficient evidence of their loss, while on the other, it accepts that plaintiffs may be unable to provide such evidence. Read update

15 Sep 2014

Weak inherent distinctive character limits scope of protection of registered mark

Israel - The IP adjudicator has dismissed an opposition by the owner of the marks SELECTED and VINEYARDS SELECTED for wine against the registration of two device marks including the words 'selected vineyards'. The adjudicator cited the Supreme Court’s decision in adidas v Yassin, in which it was held that a weak inherent distinctive character limits the degree of protection of a mark, even after it has secured protection due to its secondary meaning. Read update

15 Sep 2014

Nominet abandons cancellation policy

United Kingdom - Nominet, the ‘.uk’ domain name registry, has announced that it was abandoning its plans to automatically cancel ‘.uk’ domain names that could not be validated pursuant to its Data Quality Policy. The automatic cancellation policy was due to commence from September 22 2014; however, under the amended policy, domain names that do not meet the validation procedure will now remain suspended until the data is corrected or they expire. Read update

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