Analysis: Case Law

US district court deals Snyder’s “serious blow” in latest PRETZEL CRISPS ruling

The Western District of North Carolina has drawn a hard line in the ongoing saga over the genericness of the PRETZEL CRISPS trademark, stating that no amount of commercial success would justify monopolising the common name of the product.

US district court deals Snyder’s “serious blow” in latest PRETZEL CRISPS ruling
Federal Circuit decision crushes Australian boot maker in long-running politically fraught UGG dispute
11 May 2021

Federal Circuit decision crushes Australian boot maker in long-running politically fraught UGG dispute

The US Court of Appeals for the Federal Circuit has dealt a blow to a small Australian footwear company in the latest in an ongoing political and legal saga over the genericism of the UGG mark.

Where to appeal a TTAB decision? The choice is complicated
19 Apr 2021

Where to appeal a TTAB decision? The choice is complicated

In this guest piece, Martin Schwimmer and John L Welch unpick the recent US Court of Appeals for the Fourth Circuit decision in the PRETZEL CRISPS genericness case to examine the practical factors at play when deciding where to appeal an adverse TTAB decision.

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17 Sep 2021

Applications to register names of Chinese Olympic champions rejected ex officio

The Chinese Olympic Committee recently publicly reprimanded trademark squatters for attempting to register the personal names of Chinese Olympic champions. Spurred by the committee’s comments, the CNIPA rejected ex officio a large number of trademark applications for the names of Chinese athletes. Read more

16 Sep 2021

Lanham Act reaches foreign defendants’ extraterritorial conduct, but worldwide injunction too broad

In this dispute between a US remote control manufacturer and its former distributors, the US Court of Appeals for the 10th Circuit has considered the extraterritorial reach of the Lanham Act. Read more

15 Sep 2021

Bad news for Sony as General Court confirms that VITA mark was not put to genuine use

This decision of the General Court offers insight into whether use of a trademark for gaming consoles would constitute use for “data carriers containing programs” and “audio and/or image carriers (not of paper)”. Read more

15 Sep 2021

Not everyone on the Internet uses aliases

This UDRP decision highlights how having a trademark does not necessarily mean that a rights holder will succeed in obtaining the transfer of a domain name, even if it is identical to that trademark and even if the respondent does not reply to the complaint. Read more

14 Sep 2021

Caterpillar v Puma: battle of the big cats

The Federal Court of Australia has refused the registration of sporting company Puma’s PROCAT mark, concluding that its use would be likely to cause confusion with heavy equipment manufacturer Caterpillar’s CAT mark. Read more

13 Sep 2021

Blow for Sony in GT RACING case

Sony has failed in its attempt to prevent the registration of GT RACING based on its GT and GRAN TURISMO marks, which it uses for its popular Gran Turismo video game. Read more

13 Sep 2021

SANTA CRUZ – a city, place, ship, given name or the Spanish for ‘holy cross’?

This decision of the Borgarting Court of Appeal highlights that, in the assessment of distinctive character, one must not confer greater geographical knowledge to the average consumer than there is basis for. Read more

10 Sep 2021

General Court’s (e)message is loud and clear on law and practice applicable to invalidity assessment

The decision of the General Court in this dispute between Apple and e*Message over the validity of the mark E*MESSAGE underlines the continuity and retroactivity of EU legislation and case law. Read more

10 Sep 2021

Texas Hammer nails trademark infringement appeal

This case presented the first opportunity for the US Court of Appeals for the Fifth Circuit to consider initial interest confusion in the context of search engine keyword advertising. Read more

9 Sep 2021

WICKED v WICKED SISTER: Full Court confirms no statutory infringement by a party that has not used, but has authorised use of, a trademark

Australia’s Full Federal Court has confirmed that a trademark owner that merely authorises use of its trademark cannot be subject to liability for direct trademark infringement. Read more

7 Sep 2021

Stihl successfully invalidates infringer’s colour combination mark

Andreas Stihl, which owns a trademark for an ‘orange and grey’ colour combination for “chainsaws”, has obtained the invalidation of a trademark consisting of the colours orange, milk white and black for goods in Class 7. Read more

7 Sep 2021

Delhi High Court: adoption of ‘Delhi Public School’ marks by purported “permitted users” prima facie invalid

The Delhi Public School Society has been granted an injunction for the second time in a dispute over the use of the words ‘Delhi Public School’ and a crest logo. Read more

6 Sep 2021

Third Circuit orders second look at delays and disgorgement of profits

In a long-running dispute between two charitable organisations over the use of the marks CARS FOR KIDS/KARS 4 KIDS, the US Court of Appeals for the Third Circuit has vacated a disgorgement order totalling about $10.6 million. Read more

6 Sep 2021

High Court allows two ‘Luke’s’ restaurants to co-exist

In this dispute between rival Singapore restaurants, the High Court has decided that the parties’ respective marks and businesses could co-exist, without the relevant public being confused. Read more

3 Sep 2021

Community design representing a torch wick holder upheld - but no infringement found

This decision of the Danish Maritime and Commercial High Court highlights that defining the ‘informed user’ of a design is crucial in both invalidity and infringement claims. Read more

3 Sep 2021

Higher Board decides in favour of UGG based on well-known trademark status and principle of interdependence

Deckers Outdoor Corporation, the owner of the UGG mark, has prevailed in an opposition against the registration of the trademark UGG WATCH, winning on the basis of a likelihood of confusion despite substantial differences between the products. Read more

1 Sep 2021

The BIBBY case: bad faith and bad karma

Samsung has prevailed in a dispute with EBB Development, owned by notorious trademark filer Michael Gleissner, with the Court of Appeal of the Hague ruling that EBB had acted in bad faith when applying for the Benelux trademark BIBBY. Read more

1 Sep 2021

Manuka honey clarified in trademark opposition

The New Zealand body representing a group of ‘manuka’ honey producers has failed to prevent an Australian producer from registering a trademark containing the words ‘Australian manuka’ for honey. Read more

20 Aug 2021

Pirates and rum: only an allusive and loose association, says the Swiss Federal Administrative Court

Bacardi has had mixed results in its attempt to obtain the revocation of two marks containing the word element ‘thePirate.com’ based on its PYRAT mark. Read more

20 Aug 2021

BUTTERMITE v VEGEMITE – a Mitey dispute

Bega Cheese Limited, the owner of the VEGEMITE mark in Australia, has successfully opposed the registration of BUTTERMITE in Class 29. Read more

19 Aug 2021

TTAB upholds fraud claim against distributor of massage chairs who registered manufacturer's mark

For only the second time since the Federal Circuit's 2009 decision in In re Bose, the US Trademark Trial and Appeal Board has upheld a claim of fraud. Read more

19 Aug 2021

SHA v SHAPERFECTION: Opposition Division erred in finding that coinciding element played independent distinctive role

This decision of the Board of Appeal of the EUIPO highlights that the determination of the dominant and distinctive element of a trademark plays an important role in the global assessment of the likelihood of confusion. Read more

13 Aug 2021

Delhi High Court finds that it has territorial jurisdiction based on sale of infringing goods on third-party e-commerce platforms

The availability of infringing products on third-party online marketplaces, such as Amazon, which are accessible from Delhi and deliver goods within Delhi, established cause of action in Delhi. Read more

13 Aug 2021

Is TRAUMAGEL really too similar to TRAUMEEL?

The decision serves as a warning to owners of pharmaceutical and medical brands that, in New Zealand, no trademark opposition should be dismissed. Read more

12 Aug 2021

General Court: Framery’s mobile workspace lacks individual character in view of state of the art

The decision shows, among other things, that a design will not necessarily be regarded as not having been disclosed when only some of its features are visible in the documents put forward to establish its disclosure. Read more

12 Aug 2021

Owner of MI and MI-8 marks successfully invalidates MI-8MCƂ for helicopters

A company established by Russian Helicopters Holding Company - the only Russian helicopter designer and manufacturer, which produces the famous Mi helicopters - has prevailed in invalidity proceedings against the international trademark MI-8MCƂ. Read more

11 Aug 2021

Delhi High Court clarifies position on arbitrability of trademark disputes

This decision clarifies the approach taken by India's Supreme Court in the Vidya Drolia case in relation to the arbitrability of trademark disputes. Read more

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