NPE 2015

Legal updates

30 Jan 2015

Tesco loses appeal to register CLUBCARD marks

United Kingdom - The appointed person has rejected an appeal by Tesco Stores Limited to register the word mark CLUBCARD and the CLUBCARD device. Among other things, the appointed person found that the CLUBCARD marks would not enable an average consumer to distinguish the loyalty scheme of Tesco from that of another trader. The case highlights the difficulties that can be faced in trying to register a non-distinctive term that is widely used in a generic sense. Read update

30 Jan 2015

'Renewal snatching' found to constitute unfair competition

Switzerland - A WIPO expert's decision under the SWITCH dispute resolution policy (for ‘.ch’ and ‘.li’ domain names) is the first case under Swiss law that deals with ‘renewal snatching’ - that is, the practice of registering lapsed domain names. Although the expert found that there was no clear infringement of the claimant's trademark rights, he held that the snatching of the domain name constituted unfair competition and ordered its transfer. Read update

30 Jan 2015

Amendment introduces bad-faith registration as ground for invalidity

Albania - In the latest amendment to the Law on Industrial Property, the legislature has dealt more extensively with the concept of ‘bad faith’ by introducing a ground for invalidity of a trademark registration: the first paragraph of Article 173 provides that interested persons can request that the court declare that a trademark is invalid in cases where the application for registration was made in bad faith. Read update

29 Jan 2015

Monaco government fails to register MONACO for range of goods and services

European Union - In Marques de l’État de Monaco v OHIM, the General Court has upheld OHIM’s refusal of an application by the government of Monaco to register the word mark MONACO for a range of goods and services, including printed matter, transportation services and entertainment services. Among other things, the court found that the mark would be perceived by the relevant consumer as conveying information, rather than as a badge of origin. Read update

29 Jan 2015

Landmark decision puts the freeze on copying ice cream shop's trade dress

South Korea - In the first ruling of its kind, the Seoul Central District Court has recognised that a shop's general appearance and decorative elements can be protectable trade dress under the Unfair Competition Prevention and Trade Secrets Act. The operator of a dessert café chain had sued the franchisor of a similar chain for unfair competition on the basis that the latter was copying the plaintiff’s signature dessert and the unique appearance of its cafés. Read update

29 Jan 2015

ABSENTA BAR mark declared valid after challenge by previous Absenta Bar owner

Spain - Section 15 of the Barcelona Court of Appeal has upheld the validity of the trademark ABSENTA BAR for services in Class 43, which had been challenged by the owner of a local traditional business called Absenta Bar. Among other things, the court held that, as neither the bar's previous owners nor the current owner had been sufficiently diligent to register the sign as a trademark, the rights of the trademark owner prevailed. Read update


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