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Brexit update, plain packaging begins in Ireland, and first trademark ruling in Barbados: news round-up
In this round-up edition, we look at the latest Brexit developments from a trademark perspective, news on another solicitation scam, Hershey’s hawkish eye over the marijuana industry, and the result from the first ever trademark dispute in Barbados.
“We’re running out of good trademarks” groundbreaking study reveals 81% of common words are registered marks
A new study scrutinising the millions of marks on the US trademark register has discovered that more than 81% of the 1,000 most frequently-used words in the English language are already registered as single-word trademarks. One of the study’s authors characterises the findings as “disturbing”, warning that it could cause problems for those seeking to create brand names in the future.
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.
As national IP registries are encouraged to become innovation agencies and to offer non-core tools and services, we once again identify those leading the way and the offices trailing behind
Sweden considering prison for infringers, EUIPO switches banks and cops brandishing fake firearms: news round-up
In our latest news round-up, we look the Qatari government continuing its counterfeit crackdown, a cheese stand-off between the European Union and Mexico, how multimedia trademarks could transform the video game industry and reports of police in Pakistan using counterfeit firearms.
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.
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.
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 USPTO has filed a petition for a rehearing en banc in In re: Brunetti, a decision it contends “invalidates a century-old provision of federal trademark law that renders trademarks containing ‘scandalous’ and ‘immoral’ matter ineligible for the benefits of federal registration”. The bid to maintain a ban on scandalous marks is one that practitioners will keenly follow. However, one legal expert told us that the government faces an “uphill battle” to reverse the Federal Circuit’s ruling.
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.
Scientology trademarks, Brazil’s backlog impact and Leason Ellis victorious against solicitation scammer: news round-up
In our latest news round-up, we look at the law firm which was told it doesn’t have exclusive rights to its initials, the impact of backlog measures in Brazil, the pros and cons of China’s rocketing trademark trajectory and a new victory against trademark scammers.
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.
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