Visit IAM Logo
Subscribe now

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.

Latest

View all
26 Nov 2021

Pfizer’s opposition against registration of RUXXIMLA partially successful

The case confirms that the high degree of attention of the relevant public in respect of goods/services related to the medical field does not automatically rule out the existence of a likelihood of confusion. Read more

26 Nov 2021

New Administrative Court of Appeals mandatory precedent on issuance of new resolutions

At issue was whether the maximum term for resolving administrative proceedings under Peru’s Legislative Decree 1075 applies where a first decision has already been issued, but has subsequently been declared null. Read more

25 Nov 2021

AC Milan fails to register AC MILAN mark for stationery

In a blow to AC Milan football club, the General Court has confirmed that there was a likelihood of confusion between the mark AC MILAN and the earlier German mark MILAN for Class 16 goods. Read more

25 Nov 2021

IPEC ruling favours one Archangel over another

This dispute between two holistic therapists over the use of the mark ARCHANGEL ALCHEMY shows that the protection of a registered trademark may be trumped by prior unregistered rights. Read more

24 Nov 2021

Nissan v EUIPO: General Court rules that E-POWER and VDL E-POWER are not confusingly similar

This dispute between Japanese car manufacturer Nissan and Dutch company VDL Groep highlights the role that company names can play within composite marks. Read more

24 Nov 2021

Keeping trademarks ‘fresh’: the onus is on the opponent

This decision of the Federal Court of Australia demonstrates that unused marks can be successfully defended against non-use removal in certain circumstances. Read more

23 Nov 2021

MONSTER ENERGY case: what’s in a coffee?

The General Court has found in favour of Frito-Lay Trading Company GmbH in another of its cases against Monster Energy Co concerning the MONSTER marks. Read more

22 Nov 2021

General Court considers likelihood of confusion between ‘Süzme Peynir’ marks

The mere fact that ‘Süzme Peynir’ means something (ie, ‘cottage cheese’) to the Turkish-speaking public was not sufficient to establish a particular category of consumers targeted by the application for PINAR SÜZME PEYNIR. Read more

22 Nov 2021

Evidence of targeting is key under the UDRP

This UDRP decision highlights that it is crucial for brand owners to provide convincing evidence to establish the respondent’s intent to benefit unfairly from their trademark at the time of registration. Read more

19 Nov 2021

Delhi High Court: intent to target Indian market is sine qua non condition to exercise jurisdiction

Tata Sons failed to prevent Hakunamatata Tata Founders and others, which deal in cryptocurrency under the name/mark TATA COIN/$ TATA, from using the trademark TATA. Read more

19 Nov 2021

Supreme Court recognises need for legal certainty in assignment of IP rights

This decision of the Slovenian Supreme Court constitutes a crucial step towards legal certainty, clarifying the circumstances in which an assignment declaration or consent for transfer of an IP right will be considered valid. Read more

18 Nov 2021

Highest-ever amount of damages awarded to New Balance in trademark infringement action

New Balance has been awarded Rmb18 million in damages in a trademark infringement action brought against a Chinese shoemaker - which is significantly higher than the maximum amount of statutory damages established by law. Read more

18 Nov 2021

Frida Kahlo: portrait of a woman

In these opposition proceedings before the EUIPO, Mexican artist Frida Kahlo’s unique image was deemed - somewhat surprisingly - as simply representing a portrait of a woman. Read more

17 Nov 2021

Supreme Court rules on judges’ discretion to decrease amount of compensation for trademark infringement

Trademark owners may claim compensation for infringement under Article 1515 of the Russian Civil Code by choosing one of three methods of calculation. Although the outcome of claims based on option 1 is the least predictable, two recent rulings have shed some light of this issue. Read more

17 Nov 2021

Board of Appeal annuls refusal to register position marks for taxi services

The Board of Appeal has annulled decisions of the Estonian Patent Office refusing to register position marks consisting of a black checkerboard device on a yellow oval background placed on the front door of a taxi car. Read more

16 Nov 2021

General Court confirms likelihood of confusion between SYNDICATE marks

The General Court held that the consumers concerned would assume - or were liable to assume - that the mark RACING SYNDICATE was merely a special product line covered by the earlier mark SYNDICATE. Read more

16 Nov 2021

Bad news for Deckers as court issues decision in UGG boots case

This decision of the Serbian Commercial Court illustrates the importance of registering designs in order to be able to claim infringement. Read more

15 Nov 2021

Standing challenge brews trouble in trademark dispute

In this dispute between two beer brewing companies, the US Court of Appeals for the Federal Circuit has addressed for the first time Article III standing in a trademark case. Read more

15 Nov 2021

Patent Court holds that ASICS' use of Novak name is not trademark use

This is the first time that a Korean court has considered whether the use of a famous person's name as part of a collaboration contract amounts to trademark use. Read more

12 Nov 2021

CJEU: partial designs may be protected as unregistered Community designs

This judgment of the Court of Justice of the European Union is welcome in that it rejects the additional criteria that the German courts had tried to impose on design protection for parts of products. Read more

12 Nov 2021

‘First come, first served’ is key under the UDRP

This decision illustrates that, if several different parties may have rights to a domain name, the principle of ‘first come, first served’ is paramount. Read more

11 Nov 2021

Appeal court issues significant decision on jurisdiction in case of online infringement

This decision of the Regional Court of Appeal may encourage foreign companies with registered trademarks in Turkey to sue more readily in case of online trademark infringement. Read more

11 Nov 2021

Appeal court overturns lower court’s decision in cable car logo dispute

The district court’s decision in this dispute between two cable car venues in Norwegian beauty spots had received some criticism for its application of Paragraphs 30 and 25 of the Marketing Control Act. Read more

10 Nov 2021

General Court considers several issues concerning disclosure of earlier designs

These cancellation proceedings involving various designs for spiral hair ties provide a helpful reminder of the types of evidence that may be submitted to prove the prior disclosure of a design. Read more

9 Nov 2021

IP Court decision highlights evidence of use required to defend against non-use cancellation action

This decision of Taiwan’s IP Court demonstrates what type of evidence is required to prove trademark use when the mark at issue is used on a website that does not have a ‘.tw’ top-level domain. Read more

8 Nov 2021

Not on my watch: disclosure of restored goods’ source obviates consumer confusion

In a dispute over the sale of restored antique pocket watches, the US Court of Appeals for the Second Circuit has confirmed that the defendant’s use of the plaintiff’s mark in connection with the sale of used goods did not create consumer confusion. Read more

8 Nov 2021

CRUSTUM opposition highlights interplay of trademarks and copyrights

The Appeal Division of the State Patent Bureau of Lithuania has rejected an opposition filed by UAB Gustum against the registration of the mark CRUSTUM based on alleged copyright in the sign CRUSTUM. Read more

View all

Trending

1

Top filers, unprecedented applications and a transformed landscape: a year in the life of the EUIPO

2

New IP office standards body set to launch in effort to combat stark digital disparities

3

“The change starts with you” – INTA embraces diversity message in 2021 Annual Meeting opening ceremony

4

“Enormous momentum” – global spread of plain packaging revealed in new report

5

Johnson & Johnson decides bigger is not better