IP Service World 2014
IPBC Asia 2014

Legal updates

31 Oct 2014

General Court: six invoices insufficient to prove genuine use for everyday consumer goods

European Union - In Lidl Stiftung & Co KG v OHIM, the General Court has annulled a decision of the Second Board of Appeal of OHIM in which the latter had found that A Colmeia do Minho Lda had proved that its national Portuguese marks GLOBO had been put to genuine use for a number of goods in Classes 29 and 30. The decision shows that the requirements to prove genuine use for everyday consumer goods are high and increasing. Read update

31 Oct 2014

ISPs ordered to block access to counterfeiting websites in landmark decision

United Kingdom - In Cartier International AG v British Sky Broadcasting Ltd, the High Court has granted orders requiring several ISPs to block access to a number of counterfeiting websites. The decision marks an important development in the protection of brands online as, while there are specific UK statutory provisions dealing with blocking orders for copyright infringement, there is no such legislation for trademarks. The judgment is likely to lead to numerous similar applications. Read update

31 Oct 2014

Case highlights adjudicator's power to require posting of bond

Israel - The case of Super Medic (Medic Lite) Ltd v Nanobiotex is an instructive example of the exercise of the authority of the commissioner or adjudicator to require the posting of a bond by a non-Israel opponent. The adjudicator required the opponents to post a bond in the amount IS20,000 and, in doing so, stated that her authority to require the posting of a bond derived from the rules of civil procedure and the customary conduct in civil court cases. Read update

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


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