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In Aldi Foods Pty Ltd v Moroccanoil Israel Ltd, the Full Federal Court has considered the approach that should be adopted when it is called upon to review mixed questions of fact and law. The case clarifies that the Full Court will overturn decisions of trial judges not just where the decision is “plainly and obviously wrong”.
A panel has denied the transfer of a domain name that matched the complainant’s trademark and declared that the complaint constituted an abuse of the UDRP proceeding. The panel found that the complainant had deliberately filed a complaint without any proper basis, as the complaint was "thoroughly deficient and consisted of less than half of one page in submissions in support of the complainant's case".
In a case regarding the Krusty Krab restaurant from SpongeBob SquarePants, the US Court of Appeals for the Fifth Circuit has confirmed that a specific element from a television series can receive trademark protection. It held that a real-life seafood restaurant by the name of The Krusty Krab would cause confusion with Viacom’s common law rights in THE KRUSTY KRAB.
CJEU's EUIPO v Puma decision: mark owners may rely on earlier decisions as evidence of earlier mark's reputation
The Court of Justice of the European Union has found that previous decisions issued by the EUIPO and at national level can, in certain circumstances, be validly relied on as a means of evidence of the reputation of an earlier trademark. However, the evidential value that will be given to such decisions is yet to be seen and trademark owners should not to rely on past decisions as the sole means of evidence.
In a case involving competing producers of foam ear plugs, the US Court of Appeals for the Ninth Circuit has vacated the district court’s grant of summary judgment in favour of defendant McKeon. The district court had found that Moldex’s bright green colour for ear plugs is functional and thus not protectable as trade dress, but the Ninth Circuit held that there remained a dispute of material fact as to whether the bright green colour is functional.
A UDRP panel has refused to order the transfer of a domain name that matched a complainant’s mark because the complainant failed to prove that the respondent registered and used the domain name in bad faith. The decision shows that, in cases where a complainant is relying on a mark that consists of an acronym, dictionary word, common phrase or common surname, the complainant has a heavier burden to establish that the domain name was registered and used in bad faith.
General Court finds likelihood of confusion between FRANCE.COM and French Republic's earlier FRANCE mark
The General Court has confirmed that there was a likelihood of confusion between US company France.com Inc’s figurative mark FRANCE.COM and the French Republic’s earlier figurative FRANCE mark. Among other things, the court held that the addition of '.com', which suggests that the products in question can be bought on the Internet, was not sufficient to affect the conceptual identity of the marks.
Federal Circuit: TTAB applied wrong test in finding Coca-Cola’s ZERO mark not generic for soft drinks
In Royal Crown Company Inc v The Coca-Cola Company, the US Court of Appeals for the Federal Circuit has vacated a decision of the TTAB in which the latter found that the opponents had failed to prove that Coca-Cola’s ZERO mark is generic for soft drinks and sports drinks, but that Coca-Cola had established acquired distinctiveness in ZERO for soft drinks.
The Supreme Court has held that Airbus SAS’s mark A380 is distinctive under the Trademark Act, finding that the letter ‘A’ stands for ‘Airbus’. The court ruled that, although the combination of the letter ‘A’ and the numerals ‘380’ has no special manner or stylisation, the law requires such representation only for a combination of colours, rather than letters or numerals. The judgment demonstrates the broader view taken by the court in considering the distinctiveness of trademarks.
EasyFly recently initiated trademark infringement proceedings against easyGroup, stating that the trademarks EASYFLY and EASYJET are confusingly similar. A Colombian judge ordered easyGroup to refrain from using, marketing or offering in Colombia services distinguished by signs that are identical or confusingly similar to EasyFly’s trademarks; however, easyGroup failed to comply with the injunction.
The General Court has upheld an EUIPO First Board of Appeal decision, confirming that despite similarities between the figurative mark INPOST and Deutsche Post’s registered marks POST, EPOST and INFOPOST, the different overall impression created by the additional word and figurative elements could not be offset by the fact that the services in question are identical.
The General Court has upheld a decision of the Board of Appeal of the EUIPO, finding that the trademark STAROPILSEN, owned by Czech brewery Staropilsen, was invalid. The General Court confirmed that there was a likelihood of confusion with the earlier mark STAROPRAMEN, owned by competing brewery Pivovary Staropramen.
In Tencent Holdings Limited v Monster Energy Company, the principal assistant registrar dismissed an opposition filed by Monster Energy Company against the registration of the figurative mark MONSTER CASTLE in Classes 9, 41 and 42. This case sheds some light on the issue of whether partial oppositions are allowed under the Trademarks Act.
A case of the emperor having very few clothes: descriptive word marks dressed up as logos likely to receive very thin protection
In Karl Storz GmBH & Co KG v EUIPO, the General Court has refused an appeal from a decision of the Second Board of Appeal of the EUIPO in relation to seven out of eight identified groups of goods on the basis that the logo mark applied for was descriptive under Article 7(1)(c) of Regulation 207/2009 and that it was devoid of distinctiveness under Article 7(1)(b).
Eighth Circuit: phonetically identical description of competing dog bags does not necessarily cause confusion
In ZW USA Inc v PWD Systems LLC, which involved competitors in the dog bag market, the US Court of Appeals for the Eighth Circuit has affirmed a district court summary judgment finding that no evidence had been presented from which a jury could infer that consumers were likely to confuse ZW USA Inc’s ONEPUL dog bags with PWD Systems LLC’s BagSpot ‘one-pull’ bags.
The Higher Court has confirmed a first-instance decision ordering the defendant to stop using an infringing sign, change the appearance of its restaurant and pay 100,000 in damages to the plaintiff. The judgment is the first time that the Slovenian courts have granted protection to the trade dress of a restaurant or shop based on unfair competition.
General Court's POLO decision highlights additional protection that marks derive from being well known
The General Court has upheld a decision of the First Board of Appeal of the EUIPO, finding that there was a likelihood of confusion between the mark HPC POLO and The Polo/Lauren Company LP’s earlier mark POLO in Classes 18 and 25. The case shows that the reputation of an earlier mark can overcome arguments based on its intrinsically weak distinctive character.
Victory for Dior as Supreme People's Court overturns previous decisions on 3D mark for shape of J’adore perfume bottle
The Supreme People’s Court has overturned decisions finding that the shape of Dior’s J’adore perfume bottle lacked inherent distinctiveness and that Dior had failed to prove that the mark had acquired distinctiveness through use. Although this seems to be a victory for Dior, the court did not comment specifically on whether the evidence was sufficient to prove acquired distinctiveness. The TRAB must now issue a new decision in this case.
General Court finds no likelihood of confusion between pharma marks with same suffix; annuls Board of Appeal decision
In Tillotts Pharma AG v EUIPO, the General Court has annulled a decision of the Fourth Board of Appeal of the EUIPO finding that there was a likelihood of confusion between XENASA and PENTASA in Class 5. Among other things, the court held that the visual and phonetic similarity would be low due to the allusive character of the shared suffix ‘asa’, even among that part of the public who would perceive the suffix as a reference to the active ingredient ‘5-asa’.
In Sipral World SL EUIPO, the General Court has upheld a decision of the Second Board of Appeal of the EUIPO in which the latter had revoked the mark DOLFINA on the grounds of non-use for t-shirts and caps in Class 25. Among other things, the court held that a mark is not regarded as being put to genuine use where it is affixed to promotional items handed out as a reward for the purchase of other goods and to encourage the sale of the latter.
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