LESI 2015

Legal updates

31 Mar 2015

Supreme Court: TTAB 'likelihood of confusion' decisions can have preclusive effect in court

United States - In B&B Hardware v Hargis Industries, the Supreme Court has held that a decision of the TTAB denying registration of a trademark on likelihood of confusion grounds can have preclusive effect in a later district court infringement action. The court’s clarification that the likelihood of confusion test is the same for purposes of registration and infringement will likely have a far-reaching impact. Read update

31 Mar 2015

Precedent-setting decision provides guidance on entitlement to claim profits in infringement cases

Canada - In the long-running dispute between tobacco industry giants Imperial Tobacco and Philip Morris, the Federal Court has confirmed that Imperial Tobacco is entitled to elect an accounting of Philip Morris’ profits resulting from the infringement of its rights in the MARLBORO mark. This case was the first opportunity in decades for the Federal Court to conduct an in-depth assessment of the issue of entitlement to profits in the trademark context. Read update

31 Mar 2015

Supreme Court defines 'interested party' in context of cancellation action

Estonia - Within the context of an action filed by Inditex, the owner of several well-known ZARA marks, for the cancellation of the trademark LE DELIZIE ZARA in Classes 29 to 33, the Supreme Court has upheld Inditex’s cassation appeal, finding that the lower court’s interpretation of the term ‘interested party’ under Article 53(1)(3) of the Trademark Act had been too restrictive. Read update

30 Mar 2015

ECJ: appeal courts must state reasons too

European Union - In MEGA Brands International v OHIM, the ECJ has partially set aside the judgment of the General Court due to a lack of substantiation of its reasoning and referred the case back to the court for further consideration. The case demonstrates that appellate courts are also obliged to provide their analysis in a cohesive manner and that any reasoning by such courts must be sufficiently substantiated. Read update

30 Mar 2015

New Trademark Manual issued

Brazil - The Patent and Trademark Office has published Resolution No 142, which instituted a new Trademark Manual. The Trademark Manual unifies four documents that have been used by trademark examiners in their daily activities. Before issuing the final version of the Trademark Manual, PTO officials met with representatives of three Brazilian IP associations. Read update

30 Mar 2015

Provisions regarding the updating of industrial property fees suspended

Romania - Law No 31/2015, which suspends the provisions of Article 4 of Government Ordinance No 41/1998 on the official fees for the protection of industrial property rights, was published in the Official Gazette earlier this month. According to Article 4, the level of official fees for the registration of the industrial property rights can be updated every year to reflect the fluctuation of the exchange and inflation rates. Read update


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