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No fan site for tribute band: use of mark in domain name created implied affiliation with complainant
A UDRP panel has ordered the transfer of a domain name that matched the name of a famous pop group and belonged to a tribute band. The decision shows that genuine fan sites conferring a legitimate interest on the holder of a domain name which is identical, or confusingly similar, to a complainant's trademark are quite rare especially when the domain name is identical to the trademark, thus creating an implied sense of affiliation.
In Cantina e oleificio sociale di San Marzano v EUIPO the General Court has confirmed that there was a likelihood of confusion between the figurative mark SANTORO for “Italian wines” and the earlier word mark SANGRE DE TORO for “alcoholic beverages”. Among other things, the court rejected the argument that the scope of protection of the earlier mark should be limited to Spanish wine only.
In Anchorage Capital Partners Pty Limited v ACPA Pty Ltd the Full Court of the Federal Court has considered competing claims to ownership of the trademark ANCHORAGE for financial services. The decision clarifies certain requirements for establishing a claim of ownership and provides additional guidance on when the own name defence will be available.
Good news for rights holders: SON and NAFDAC enter into partnership to tackle fake and substandard products
The Standard Organisation of Nigeria and the National Agency for Food and Drugs Administration and Control have entered into a partnership; the agencies will work in close collaboration to achieve the eradication of substandard and counterfeit products in the marketplace. Both agencies have expressed their commitment to work together where their duties overlap.
In Novartis v EUIPO, the General Court has upheld a decision of the EUIPO finding that Novartis’ figurative EU trademark, which represents the company’s Exolon transdermal patch, was invalid. The court agreed that the mark was composed of a sign consisting exclusively of the shape of the product necessary to obtain a technical result within the meaning of Article 7(1)(e)(ii) of Regulation 207/2009.
The 2018 PyeongChang Olympic and Paralympic Winter Games Act, which aims to prohibit the unauthorised use of games-related symbols, logos and slogans, did not initially address the issue of ambush marketing, leading to some uncertainty as to whether ambush marketing activities might be tolerated. However, the government has now indicated its intention to regulate such activities by amending the act to add specific provisions on ambush marketing.
Letters of consent have been problematic in China, where brand owners often experience difficulty in obtaining such letters from local companies and having them accepted by the courts. However, there are encouraging signs that the situation is changing, which is good news for brand owners looking to protect their trademarks in the country. This update also provides a useful summary of what brand owners need to know when seeking to rely on letters of consent in China.
Effective as of January 15 2018, Circular 16/2016/TT-BKHCN of the Ministry of Science and Technology introduced important changes to trademark-related procedures before the National Office of Industrial Property. Among other things, applicants are now given longer time periods to respond to office actions, and the NOIP must provide opponents with the details of the examination of the opposed application.
In Arctic Cat v EUIPO, the General Court has upheld a decision of the Fifth Board of Appeal of the EUIPO finding that there was a likelihood of confusion between two marks representing a jumping wild cat for goods in Class 25. Among other things, the court held that, when a mark covers several kinds of goods for which the level of attention of the public varies, the section of the public with the lowest level of attention must be taken into consideration to evaluate the likelihood of confusion.
NiRA, the registry responsible for running the ‘.ng’ domain name space, has announced that registrations under ‘.ng’ passed the 100,000 mark in 2017, but noted a slowdown in new domain name registrations and renewals in the last quarter of 2017. The National Information Technology Development Agency, highlighting the general practice of hosting data offshore, argued that hosting data locally would help boost the Nigerian economy.
JOY fails to prevent registration of HISPANITAS JOY IS A CHOICE despite enhanced distinctive character
In Jean Patou Worldwide v EUIPO the General Court has upheld a decision of the EUIPO First Board of Appeal, finding that there was no likelihood of confusion between the figurative mark HISPANITAS JOY IS A CHOICE and the earlier mark JOY for goods in Class 3. Among other things, the court rejected the allegation that the board had not sufficiently taken into account the enhanced distinctive character, acquired through use, of the earlier mark.
In a decision under the Syreli alternative dispute resolution (ADR) procedure, a college from the French domain name registry has denied the transfer of a domain name consisting of the name of the complainant under ‘.fr’ due to lack of evidence. The case highlights that complainants must provide sufficient evidence to support their claims under French ADR procedures, as the panel will not perform independent research, contrary to the UDRP.
Slight change in defendant's registered mark found to infringe claimant's mark; court awards Rmb3 million in damages
The Zhongshan Intermediate Court has found that the registered trademark 了M, as used by its owner, did not constitute "standard use" of the registered trademark and infringed 3M Company’s registered trademark 3M. The transformation, through their actual use, of registered trademarks into infringing signs is becoming a real concern.
Canada is finally completing the last steps necessary for implementing its new trademark law. The final draft Trademarks Regulations were released on February 10 2018, and the regulations are expected to be officially published in their final form in October. The changes will be the most significant in 50 years; among other things, the definition of a 'trademark' will be greatly expanded and it will finally be possible to divide applications.
The Supreme Court of Appeal has handed down its decision in Cochrane Steel v M-Systems, which dealt with the effect of disclaimers and admissions in South African trademark law. Among other things, the court reiterated that the phonetic equivalent of a non-distinctive word is itself non-distinctive; it would seem to follow that, if the word itself is one that ought to be disclaimed, then so too should its phonetic equivalent.
In EUIPO v European Food SA, the ECJ has dismissed an appeal filed by the EUIPO against a decision of the General Court, finding that there are no time limits for the production of evidence in the context of an application for declaration of invalidity based on absolute grounds including at the appeal stage.
In In re: Brunetti, the Federal Circuit has reversed the TTAB's holding that the mark FUCT as used in connection with various apparel items was unregistrable. The Federal Circuit’s reasoning differed somewhat from the Supreme Court’s underlying rationale in the landmark SLANTS case, and concluded that the Lanham Act’s bar on registering immoral or scandalous marks is an unconstitutional restriction on free speech.
A new circular published by the Ministry of Customs and Trade is helping rights holders to combat counterfeiting more effectively. Previously, Customs and the Liquidation Directorates did not consider whether smuggled goods were counterfeit, which meant that counterfeits often ended up on the market. With the new system, general customs applications also cover goods processed by the Liquidation Directorates, so there is no need for IP owners to file a separate application.
In Constantin Film Produktion GmbH v EUIPO, the General Court has upheld a decision of the EUIPO rejecting an application for the mark FACK JU GÖHTE for a wide range of goods and services. This is one of the rare cases in which registration of a mark was refused based on Article 7(1)(f) of Regulation 207/2009 - that is, on the ground that it is contrary to public policy or to accepted principles of morality.
A UDRP panel has denied the transfer of a domain name identically reproducing a complainant's trademark for failure to show bad-faith registration, and also made a finding of reverse domain name hijacking for failure to disclose prior communications with the respondent. In the panel's view, the complainant’s actions suggested that the filing of the complaint was "plan B" following several failed attempts to purchase the domain name.
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