Legal updates

26 May 2017

TTAB denies registration of CITY CLUB mark due to prior rights

United States - In a non-precedential decision the Trademark Trial and Appeal Board denied registration to CITY CLUB for soft drinks based on the opposer’s earlier use of the same mark for the same goods, holding that the opposer had not abandoned its mark. The case serves as a reminder that a cancelled registration does not guarantee that the trademark owner has abandoned the mark without a claim of common law rights. Read update

26 May 2017

Russia accedes to the Hague System for the International Registration of Industrial Designs

Russia - President Vladimir Putin has signed the law on ratification of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs 18 years after Russia signed the final act. The law on ratification will enter into force on October 1 2017, after which the Ministry of Foreign Affairs of Russia will notify the World Intellectual Property Office and the Russian Federation may be designated in international applications for registrations of industrial designs. Read update

25 May 2017

Trademarks owners be warned — certain services may require bricks-and-mortar location

Canada - Stikeman Elliott LLP v Millennium & Copthorne International Limited demonstrates the challenges facing trademark owners in e-commerce when it comes to certain services (eg, hotel services), as an emerging Trademark Opposition Board trend warns that unless registrants perform their services through bricks-and-mortar establishments located in Canada, mere advertising or performance of tangentially related services (eg, reservation or event planning services) may be insufficient to maintain registrations. Read update

25 May 2017

New rules and regulations on implementing the co-existence principle

Turkey - The Industrial Property Code introduced the co-existence principle for trademarks into Turkish trademark law and the Regulation on the Implementation of the Industrial Property Code includes detailed provisions on this principle. The co-existence principle is a welcome amendment, as it enables rights holders to overcome a possible ex officio refusal of their trademark applications without the need to obtain a favourable decision from the appeal board or the civil IP courts. Read update

24 May 2017

EU General Court in the shoes of chemists: adopting strict approach to acronyms’ descriptiveness

European Union - The EU General Court recently upheld the cancellation of the chemical product trademark DINCH for lack of distinctiveness and generic character. This decision highlights the EU Intellectual Property Office’s stricter approach to signs such as acronyms, and recalls the importance of filing marks which truly depart from the common use of professional fields to avoid nullity or revocation actions. Read update

24 May 2017

TTAB rules against US Marine Corps due to lack of evidence

United States - Peter Healy applied to register the mark MARINE ONE DOWN for computer game software. The US Marine Corps filed a notice of opposition with the Trademark Trial and Appeal Board, claiming that Healy’s mark created a likelihood of confusion. Although the board found that the Marine Corps had standing, its claims were ultimately rejected due to alleged lack of sufficient evidence. Read update

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Issue 67