Legal updates

19 Jan 2017

Kit Kat decision sets high bar for proving acquired distinctiveness of shape marks

European Union - In Mondelez v EUIPO, the General Court has ruled that the EUIPO must re-examine whether Nestlé’s 3D mark for the shape of its four-fingered Kit Kat bar had acquired distinctiveness in all EU member states for all the goods covered by the mark. The decision will not be welcomed by applicants for shape marks, who now face the prospect of incurring significant costs in compiling evidence that their mark has acquired distinctiveness in all 28 EU member states. Read update

19 Jan 2017

TITANIC QUARTER revoked due to "clear absence of evidence of use"

Ireland - In Property Renaissance Limited v Titanic Trademark Limited, Property Renaissance Limited has obtained the revocation of the word mark TITANIC QUARTER, registered in the name of Titanic Trademark Limited in Classes 36, 41 and 42, on the basis that the mark had not been put to genuine use in Ireland. Read update

18 Jan 2017

Federal Court decision provides guidance on several useful aspects for practitioners

Australia - In Insight Radiology v Insight Clinical, Insight Clinical enjoyed a substantial victory in its claims that Insight Radiology’s conduct constituted trademark infringement, passing off and misleading or deceptive conduct. This decision has several useful aspects for practitioners, including its exploration of how a questionable claim to ownership of a trademark application may be cured by assignment, as well as the threshold level of reputation required for a Section 60 opposition. Read update

18 Jan 2017

Unregistered mark with reputation can enjoy protection

Israel - In The National Aluminium & Profile Co (foreign company) v Extal Ltd, the Jerusalem District Court has affirmed the deputy trademark registrar’s refusal to register a mark consisting of a lengthwise slit along aluminium profiles following an opposition by the owner of a long-used similar mark. Read update

17 Jan 2017 does not have to put out the fire

United States - Addressing an interlocutory appeal, the US Court of Appeals for the 11th Circuit has affirmed a district court’s denial of a preliminary injunction against for trademark infringement, agreeing that the plaintiff’s motion was too little, too late. Read update

17 Jan 2017

The battle of Porsche versus P@RSCHE

Netherlands - The District Court of The Hague has rendered a judgment in a case brought by Porsche against an unnamed individual. Both parties had met previously in court in 2012, when it was ruled that the defendant had filed a trademark application for the word PORSCHE in bad faith. Read update


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Issue 65