IP Service World 2014
IPBC Asia 2014

Legal updates

30 Oct 2014

Figurative 'T' marks held to be confusingly similar

European Union - In Tifosi Optics Inc v OHIM, the General Court has upheld a decision of the Second Board of Appeal of OHIM in which the latter had found that there was a likelihood of confusion between two figurative signs consisting of the letter ‘T’ surrounded by an oval. The court agreed with the board that the goods covered by the marks were either similar or identical, and that the marks were visually similar and aurally and conceptually identical. Read update

30 Oct 2014

Court rules on use of third-party trademarks as AdWords

Spain - The Barcelona Commercial Court Number 2 has dismissed Fotoprix’s trademark infringement and unfair competition action against Vistaprint, and upheld Vistaprint’s counterclaim for a declaration of partial invalidity and partial cancellation of Fotoprix’s FOTOLIBRO mark. Among other things, the court referred to the ECJ’s decision in Google France to decide whether Vistaprint’s use of Fotoprix’s marks as AdWords amounted to infringement. Read update

30 Oct 2014

TPI softens its approach to registration of 3D marks

Turkey - Following two recent cases involving 3D marks consisting of bottle shapes, it seems that the Turkish Patent Institute has softened its approach to the registrability of 3D shape marks. The cases suggest that, even if a 3D mark is rejected following the initial examination, it is still possible to overcome such refusal by filing an appeal to the High Board of the TPI, without necessarily having to challenge the decision before the specialised IP courts. Read update

29 Oct 2014

General Court makes 'surprising' findings regarding procedural aspect

European Union - In Fuchs v OHIM, the General Court has confirmed a decision of the Fifth Board of Appeal of OHIM finding that there was a likelihood of confusion between marks consisting of a star within a circle. Among other things, the court considered whether, following the revocation of one of the marks on which the opposition was based, the annulment of the board’s decision, to the extent that it is based on that mark, was capable of procuring an advantage for the applicant. Read update

29 Oct 2014

Examination criteria for sound marks defined

China - Following the clarification of the filing requirements, the Chinese Trademark Office has defined the examination criteria of sound marks. Among other things, the distinctiveness of sound marks is normally acquired through extensive use and, in principle, the similarity of sound marks is examined by comparing the sound mark samples. Read update

29 Oct 2014

Court rejects coexistence agreement between Nissan and GM

Peru - The Administrative Court of Appeals has rejected a coexistence agreement between Nissan and General Motors and, consequently, refused Nissan's trademark application for NP300. The court held that, even though the parties had entered into a coexistence agreement, consumers might be confused as the marks NP300 and N300 are similar and cover the same goods in Class 12. Read update


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