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Analysis: Case Law

Can anonymous internet comments be used as evidence in trademark litigation?

While the role of anonymous confusion is still somewhat muddied by inconsistent approaches, parties should be prepared to handle concerns as to relevance, hearsay and authentication.

Can anonymous internet comments be used as evidence in trademark litigation?
2 Oct 2018

Attack on the senses: a comparison of non-traditional marks

Practitioners need to be aware of the differences between obtaining protection for smell, taste and texture marks in the European Union and the United States.

1 Oct 2018

Moving and shaking: securing protection for shapes and movement marks

With non-traditional trademark registrations on the rise, a nuanced understanding of the differences between obtaining protection in the European Union and the United States is crucial.

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Today

UDRP: termination of business does not mean termination of rights in a domain name

A recent decision under the UDRP serves as a reminder that the termination of a business activity does not imply the disappearance of rights to the domain name related to such business. Read more

Today

Composite suit for design infringement and passing off is maintainable, holds Special Bench of Delhi High Court

Overruling an earlier decision of the Full Bench in a similar case, a Special Bench of the Delhi High Court has held in Carlsberg Breweries v Som Distilleries that a composite suit for design infringement and passing off may be maintained. Read more

18 Jan 2019

Restricting keyword advertising can be anti-competitive, holds the FTC

In a case concerning 1-800-Contacts’ approach to curbing competitors’ use of “1-800-Contacts” as an online search keyword, the US Federal Trade Commission has weighed in for the first time on whether restricting the use of trademark keywords is anti-competitive. Read more

17 Jan 2019

Blackhawks.com down! Respondent found to have engaged in pattern of abusive domain name registration

A recent UDRP decision involving the domain name ‘blackhawks.com’ shows that a domain name registrant may be found to engage in conduct that amounts to bad faith even if it is not targeting a specific trademark holder. Read more

16 Jan 2019

Sky skewers Samsung in 'Q' case

The UK Intellectual Property Office has upheld an opposition filed by Sky, the owner of a figurative mark intended to be seen as ‘Q’, against the registration by Samsung of a mark representing the letter ‘Q’. Read more

16 Jan 2019

Blow for Horlicks as Delhi High Court rules in favour of Heinz in comparative advertising case  

The Delhi High Court has dismissed Horlicks’ application for an interim injunction against Heinz India, holding that an advertiser is allowed to make a comparison with other products as long as such comparison is true. Read more

15 Jan 2019

UDRP: no change in the status quo is not a legally relevant development

A recent decision under the UDRP highlights important points for complainants contemplating the submission of a refiling. Read more

15 Jan 2019

Court of Appeal deviates from 'first to register' rule and protects foreign brand owner

In a significant victory for brand owners, Nigeria’s Court of Appeal has deviated from the ‘first to register’ rule and held that the true owner of the mark KASEA was a Chinese company which was not a party to the proceedings. Read more

11 Jan 2019

Preliminary injunctions granted against Blablatel Mobile for parallel imports

In a dispute between two mobile phone companies, the EU Trademark Court Number 1 of Alicante has confirmed that importing goods that were originally intended to be marketed outside the European Economic Area without the trademark owner's consent constitutes infringement. Read more

11 Jan 2019

Skyscanner fails to obtain transfer of ‘fly-scanner.com’ under UDRP

In a recent case under the UDRP, Skyscanner has failed to prove that the respondent had registered and used the domain name ‘fly-scanner.com’ in bad faith, even though it was being used in relation to competing services. Read more

10 Jan 2019

The red-and-white jersey belongs to all Peruvians - but not when it includes the Peruvian Football Federation’s shield

The Peruvian Trademark Office has allowed the registration of two trademarks representing the red-and-white jersey of the national football team - but only because the marks included the Peruvian Football Federation’s shield. Read more

9 Jan 2019

Federal Supreme Court: Producers must prove that Champagne does not determine taste of ‘Champagner Sorbet’

In a dispute over the use of the name ‘Champagner Sorbet’, the German Federal Supreme Court has held that the burden of proving that the ingredient Champagne does not determine the taste of ‘Champagner Sorbet’ rests on the claimant, a French association of Champagne producers. Read more

8 Jan 2019

UDRP complainants: be careful not to trigger a finding of reverse domain name hijacking

In recent UDRP proceedings, a panel has denied the transfer of a domain name that was identical to the complainant's mark and also made a finding of reverse domain name hijacking - even though the respondent did not specifically ask for such relief. Read more

8 Jan 2019

Spinning around: General Court annuls EUIPO decision revoking SPINNING mark

The EU General Court has annulled a EUIPO decision revoking the mark SPINNING for “exercise equipment” and “exercise training” services. The decision highlights the importance of showing consumers of goods as being both sophisticated and lay. Read more

7 Jan 2019

Cadbury’s colour purple mark can’t be split - clarity and precision are the winners in the Court of Appeal

In a significant blow to Cadbury, the Court of Appeal of England and Wales has rejected the confectionary giant’s argument that its trademark registration for the colour purple was actually a series mark which could be split and partially maintained. Read more

4 Jan 2019

Eagle mark soars to injunction against identical hawk logo

In Alliance for Good Government v Coalition for Better Government, the US Court of Appeals for the Fifth Circuit has considered whether there was a likelihood of confusion between two logos arranged around a stylised bird. Read more

3 Jan 2019

General Court: Board of Appeal failed to sufficiently examine ownership of goodwill in The Commodores name  

The EU General Court has issued its decision in a dispute between founding members of the band The Commodores over the mark THE COMMODORES. Read more

30 Nov 2018

General Court does not bottle it in 3D trademarks ruling

In Wajos GmbH v EUIPO, the EU General Court has confirmed that a 3D trademark can consist of the shape of goods or their packaging. Read more

29 Nov 2018

Barcelona Court of Appeal hands down criminal sentence for commercialisation of counterfeit FC Barcelona products

In a case involving counterfeit FC Barcelona products, the Court of Appeal of Barcelona has confirmed that the defendant had committed a crime against intellectual property under Article 274 of the Criminal Code. Read more

29 Nov 2018

General Court: imperfect recollection of earlier mark imputes likelihood of confusion, even for specialised and highly attentive public

In Asahi Intec Co Ltd v EUIPO, the EU General Court has held that, although the specialist public would pay a high level of attention to the marks, the doctrine of imperfect recollection meant that a risk of a likelihood of confusion could not be ruled out. Read more

28 Nov 2018

Italian consortium prevents registration of EMILIANA by Chilean wine producer

Iceland’s Patent Office has upheld an opposition filed by Consorzio Tutela Vini Emilia – the Italian association for the protection of the GI ‘Emilia’ for wine – against the registration of EMILIANA by a Chilean wine producer. Read more

27 Nov 2018

Supreme Court issues landmark decision on parallel imports

In a landmark decision, the Serbian Supreme Court of Cassation has ruled that parallel imports constitute trademark infringement, thus revoking the decisions of the Commercial Court and the Commercial Appellate Court. Read more

26 Nov 2018

Breaking new ground: Court of Appeal rules that ‘first user’ principle is not applicable to disputes between related entities

In Pathmanathan v Portcullis (Singapore) Pte Ltd, the Malaysian Court of Appeal has held that the courts are not bound by “hard and fast legal rules” when deciding on the ownership of a trademark among related entities. Read more

26 Nov 2018

General Court: Pirelli’s figurative mark is registrable

The EU General Court has annulled a decision of the Fifth Board of Appeal of the EUIPO in which the latter had invalidated in part a figurative mark representing an L-shaped groove owned by Pirelli Tyre SpA. Read more

23 Nov 2018

Australian salumi manufacturer defeats Italian food giant in trademark battle over logo

Australian salumi manufacturer Borgo Salumi has defeated an attempt by Italian food giant AIA Agricola Italiana Alimenare to stop it from registering the logo that it had used for decades. Read more

23 Nov 2018

Victory for Louboutin as Delhi High Court clarifies responsibilities of online intermediaries

In Christian Louboutin SAS v Nakul, the Delhi High Court has ruled in favour of Louboutin, stating that the safe harbour protection under Section 79 of the Information Technology Act is not absolute. Read more

22 Nov 2018

Warning: UDRP proceedings are not a "Plan B"

In a recent decision under the UDRP, a panel has refused to order the transfer of a domain name that exactly matched the complainant's mark and made a finding of reverse domain name hijacking, stating that the proceedings constituted the complainant’s "Plan B". Read more

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Trending

1

UDRP: no change in the status quo is not a legally relevant development

2

Sky skewers Samsung in 'Q' case

3

Blow for Horlicks as Delhi High Court rules in favour of Heinz in comparative advertising case  

4

Blackhawks.com down! Respondent found to have engaged in pattern of abusive domain name registration

5

Restricting keyword advertising can be anti-competitive, holds the FTC

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Lee Webster
Partner
Toronto ON, Canada
Osler, Hoskin & Harcourt LLP
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