Analysis: Case Law

The Sky v Skykick opinion: what it could mean for trademark professionals

Advocate General Tanchev has handed down his opinion in the highly anticipated Sky v Skykick case. If the opinion is followed by the CJEU, market experts predict that the enforcement of existing trademark registrations could become riskier, while application strategies would have to be reviewed.

The <em>Sky v Skykick </em>opinion: what it could mean for trademark professionals
18 Sep 2019

Trademark litigation in Brazil: 12 key questions answered

In the second part of this focus on enforcement in Brazil series, 12 key questions on litigation processes and strategies are answered.

7 Aug 2019

Return of the Supermac’s: Irish chain delivers another blow to McDonald’s 

The EUIPO has partially invalidated McDonald’s EU trademarks for the ‘Mc’ prefix. As with the recent BIG MAC decision, McDonald’s was deemed to have submitted insufficient evidence to claim use for the disputed marks.

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13 Nov 2019

General Court: Board of Appeal incorrectly interpreted specification of earlier trademarks

The EU General Court has held that, when interpreting the specification of an earlier mark, it is the interpretation which, among a number of possible interpretations of EU legal instruments, is the one which does not lead to an absurd result that must be preferred. Read more

12 Nov 2019

In the pink: lack of personal jurisdiction results in dismissal of non-infringement verdict

In C5 Med Werks v CeramTec GmBH, the US Court of Appeals for the 10th Circuit has reversed a Colorado district court’s bench trial verdict, finding that the district court lacked specific personal jurisdiction over defendant CeramTec. Read more

12 Nov 2019

OEM for export: Supreme People’s Court expands definition of ‘relevant public’ in HONDAKIT case

In Honda Motor Co Ltd v Chongqing Hengsheng Xintai Trading Co Ltd, the Supreme People’s Court of China has, for the first time, defined the ‘relevant public’ in OEM cases as including all operators and consumers that may have access to OEM goods for export. Read more

11 Nov 2019

When "sweet water" becomes bitter

A three-member panel has denied the transfer of a domain name consisting of the Spanish generic term ‘agua dulce’ (‘sweet water’ or ‘fresh water’ in English) under the UDRP due to the lack of sufficient evidence supporting the targeting of the complainant’s trademark. Read more

11 Nov 2019

CJEU refuses to hear appeal in trademark case under new rules

In Wirecard Technologies Gmbh v EUIPO, the Court of Justice of the European Union has decided for the first time that an appeal in a trademark case was inadmissible under new rules that came into force in May 2019. Read more

8 Nov 2019

Are international trademark registrations valid in Zambia?

The recent judgment of the Zambian registrar of trademarks in Sigma-Tau Industrie Farmaceutiche Riunite v Amina Limited deals with the vexed question of whether international registrations are actually valid in Zambia. Read more

8 Nov 2019

ISIPO considers 'legitimate interests' condition under Article 30(a) of the Trademarks Act

The Icelandic Intellectual Property Office has dismissed a claim for the cancellation of the mark LJÓSLEIÐARINN on the ground that the claimant had not met the ‘legitimate interests’ condition under Article 30(a) of the Trademarks Act. Read more

7 Nov 2019

Patent and Market Court confirms likelihood of confusion between JOHN WHITE and JTI's JOHN SILVER for cigarettes

The Swedish Patent and Market Court has upheld a decision of the Patent and Registration Office finding that there was a likelihood of confusion between Diamond Quest’s JOHN WHITE mark and JTI’s earlier JOHN SILVER marks for cigarettes. Read more

7 Nov 2019

General Court confirms likelihood of confusion between figurative mark NUME and word mark NUMEDERM

The EU General Court has upheld a decision of the Fifth Board of Appeal of the EUIPO finding that there was a likelihood of confusion between the figurative mark NUME and the earlier word mark NUMEDERM for certain goods in Classes 5, 29 and 30. Read more

6 Nov 2019

Harvard Club of Singapore fails to prevent Harvard University from registering HARVARD marks

Harvard University and its former alumni organisation in Singapore have recently clashed in trademark opposition proceedings before the Intellectual Property Office of Singapore. Read more

6 Nov 2019

High Court dismisses Glaxo's passing-off claim for competitor's use of the colour purple

The decision of the High Court of England & Wales in Glaxo Wellcome UK Ltd v Sandoz Ltd reaffirms the well-established principles of the tort of passing off and the difficulties of proving goodwill in a colour. Read more

5 Nov 2019

TREBOL case: notoriety as a defence in non-use cancellation actions

Peru’s Administrative Court of Appeals has dismissed an action for the cancellation of the mark TREBOL in Class 1 due to non-use, as the owner had demonstrated that the mark was a variation of the well-known figurative trademark TREBOL in Class 11.   Read more

5 Nov 2019

General Court attempts to solve Rubik’s Cube puzzle

In Rubik’s Brand Ltd v EUIPO, the EU General Court has confirmed the cancellation of an EU trademark consisting of the shape of the well-known Rubik’s Cube puzzle in the latest decision in the long-running battle between Rubik’s Brand and Simba Toys. Read more

4 Nov 2019

Criminal sentence handed down for possession of infringing FC Barcelona t-shirts

The Madrid Court of Appeal has upheld a lower court decision sentencing the defendant to five months’ imprisonment for possessing 9,317 counterfeit items of clothing for commercial purposes, including t-shirts infringing the IP rights of FC Barcelona. Read more

4 Nov 2019

Keep calm and CARRY ON ping-ponging between a hearing officer and an appointed person

The decision of the appointed person in opposition proceedings between ITV Studios Ltd and Carry On Films Limited serves as a reminder that all relevant grounds should be taken into consideration at the first instance to limit the burden on the parties and the court system. Read more

1 Nov 2019

Good news for trademarks owners: trademark office may now issue declarations of notoriety 

The Costa Rican trademark office’s Administrative Guideline DPI-0003-2019, which details the procedure for obtaining a declaration of notoriety of a mark, was recently published in the Official Gazette. Read more

1 Nov 2019

Never underestimate the importance of DUNGEONS in Dungeons & Dragons

In Kalypso Media Group GmbH v EUIPO, the EU General Court has confirmed that there was a likelihood of confusion between the mark DUNGEONS and the earlier mark DUNGEONS & DRAGONS for games and computer games. Read more

31 Oct 2019

Trademarks and "style names" - can you tell the difference?

The decision of the Federal Court of Australia in Pinnacle v Triangl provides a new characterisation of the defence that a name is not being used as a trademark, when there is also use of a principal or ‘house’ brand. Read more

30 Oct 2019

UDRP proceedings: evidence of targeting is crucial

A UDRP case involving the domain name ‘ᴍx.com’ illustrates that targeting is crucial in order to prove bad faith - and the shorter the domain name, the more difficult this is to prove. Read more

30 Oct 2019

McDonald's triumphant in MC DREAMS opposition

In McDreams Hotel GmbH v EUIPO, American fast food giant McDonald's has successfully enforced its rights against a EU trademark application incorporating the prefix ‘Mc’ on the basis of its extensive reputation.  Read more

29 Oct 2019

Russia's Constitutional Court gives a boost to well-known trademarks

The Constitutional Court of the Russian Federation has confirmed that the laws recognising well-known status are constitutional and valid. Read more

28 Oct 2019

Blow for Puma as General Court confirms likelihood of confusion between MG PUMA and GINMG in Class 33

The EU General Court has confirmed that there was a likelihood of confusion between Puma SE’s mark MG PUMA and Destilerias MG SL’s earlier mark GINMG for goods in Class 33. Read more

25 Oct 2019

Technological developments widen scope of admissible evidence in opposition proceedings

In recent opposition proceedings, the Turkish Patent and Trademark Office has found that the trademark of a US burger chain was well known within the meaning of Article 6bis of the Paris Convention, even though it had not been used in Turkey. Read more

24 Oct 2019

UDRP: prior trademark rights are not always a decisive factor

A recent UDRP decision involving the domain name ‘longevitynutrition.com’ shows that complainants should always try and provide tangible evidence with regard to the actual use of their trademark and, where applicable, any degree of public recognition and reputation. Read more

24 Oct 2019

Is FITNESS descriptive? General Court considers implications of allowing new evidence regarding descriptiveness before boards of appeal

In Société des Produits Nestlé SA v EUIPO, the EU General Court has added to the case law concerning the admissibility of new evidence submitted for the first time before the boards of appeal. Read more

23 Oct 2019

EBAY recorded as a well-known trademark in Turkey

Following an unfavourable first-instance decision, the Turkish Patent and Trademark Office Re-examination and Evaluation Board has recognised on appeal by eBay Inc that the trademark EBAY is well known in Turkey. Read more

23 Oct 2019

General Court considers requirements for proving that coexistence is based on absence of likelihood of confusion

In Wanda Films v EUIPO, the EU General Court has found that the applicant had failed to prove that the parties’ marks coexisted peacefully on the relevant market and that such coexistence was due to an absence of a likelihood of confusion. Read more

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Gabriela Bodden
Partner
San Jose, Costa Rica
Eproint