Legal updates

21 Nov 2017

A prickly case – ECJ upholds opposition against CACTUS mark

European Union - The EU Intellectual Property Office has appealed a decision concerning two opposing marks containing the word 'cactus', based on a likelihood of confusion. The European Court of Justice considered whether a previous case regarding specificity of goods and services covered by trademark applications applied retrospectively, and whether use of the device aspect of an earlier mark alone could constitute genuine use of the earlier mark and thus fall within the regulation. Read update

21 Nov 2017

Glove manufacturer gets burned in US design patent damages case

United States - A California jury has held that Seirus infringed Columbia Sportswear’s design patent and utility patent, both relating to heat-reflective materials. In the first case on the matter since Samsung v Apple, in which the Supreme Court held that an “article of manufacture” may be a single component instead of the entire end product, the jury awarded Columbia the entire amount of Seirus’ profits on the product. Read update

20 Nov 2017

ECJ clarifies relation between infringement procedure and invalidation counterclaim

European Union - The European Court of Justice has clarified that national courts must rule on the counterclaim for a declaration of invalidity before they can dismiss an infringement action based on the same grounds for invalidity. However, this does not prevent the court from dismissing the infringement action before the ruling on the counterclaim is made final. Read update

20 Nov 2017

Number 12 distinctive for door handles

Finland - The Finnish Supreme Administrative Court has annulled a decision to refuse registration of the number mark 12 for door handles, stating that since it was not reasonably foreseeable that consumers would associate 12 with the number or price of the door handles, the mark was not devoid of distinctiveness. The decision demonstrates that trademarks consisting of numbers can be registered but will have a weak distinctive character. Read update

17 Nov 2017

TOBBIA or not TOBBIA is no longer the question

European Union - The EU Intellectual Property Office (EUIPO) First Board of Appeal has overruled the EUIPO Cancellation Division and declared the trademark TOBBIA and device confusingly similar to PEPPA PIG and device, primarily due to the device elements of the two animals. The board found that the devices were visually similar, but did not address the dissimilarity of the word elements. Read update

17 Nov 2017

Court of Appeal upholds decision in London Taxi case

United Kingdom - The Court of Appeal has upheld the High Court’s ruling in the London Taxi case, finding that the taxi cab shape mark lacks inherent distinctiveness. This unsurprising decision highlights the issues faced in registering and protecting shape marks. The judgment provides useful guidance on proving inherent distinctiveness and defining the average consumer. Read update

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Issue 70