Analysis: Case Law

“UK will become paradise for free riders”: CJEU referral highlights potential Brexit IP schism

Four questions have been referred to the CJEU which could lead to a landmark judgement on a trademark owners’ rights to stop resales. The decision may further enlarge the gulf between the UK and the EU's position on exhaustion post-Brexit.

“UK will become paradise for free riders”: CJEU referral highlights potential Brexit IP schism
16 Jan 2020

How the amicus briefs could sway the US Supreme Court in anticipated ‘booking.com’ ruling

Three amicus curiae briefs have been delivered to the US Supreme Court ahead of its long-anticipated ruling in USPTO v Booking.com. WTR spoke to two experts to see how these briefs may influence the United States' highest court.

6 Dec 2019

Fleet Feet’s court victory against Nike highlights challenges in using and protecting slogan marks

A ruling centred on Nike’s use of the ‘Sport Changes Everything’ slogan highlights the conundrum over when and where to seek registered protection for slogans, and the different approaches adopted by IP offices to ad campaign slogans.

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20 Feb 2020

A tiff over lashes - UKIPO refuses registration of COTSWOLD LASHES BY TIFFANY on basis of likelihood of confusion

The UK Intellectual Property Office has upheld US jewellery giant Tiffany & Co’s opposition against the registration of COTSWOLD LASHES BY TIFFANY by the owner of a small UK-based business. Read more

19 Feb 2020

Federal Court finds URBAN ALE descriptive for beer

In Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd, the Federal Court of Australia has concluded that the trademark URBAN ALE for beer should be cancelled because it is descriptive of beer products produced in an inner-city location. Read more

19 Feb 2020

DERBY case: Court of Appeal overturns lower-court decisions in controversial ruling

In opposition proceedings against the DERBY mark, the Turkish Court of Appeal has overturned decisions of the lower courts based on copyright infringement and the well-known status of the earlier mark – even though the opponent had not sought to rely on its copyright in the mark. Read more

18 Feb 2020

General Court confirms genuine use of The Guide Association’s BROWNIE and BROWNIES marks

The decision of the EU General Court in Grupo Textil Brownie SL v EUIPO highlights many of the key principles governing the assessment of the evidence of use of an earlier mark. Read more

18 Feb 2020

Complainant's hopes for winning the UDRP are sleeping with the fishes

A WIPO panel has refused to order the transfer of the domain name ‘taffo.com’ under the UDRP, finding that the dispute was in fact a complex trademark matter better resolved in a different forum. Read more

17 Feb 2020

Appellate court rules that use of a registered trademark as part of a trade name may constitute actionable infringement

In SkyWorld Development Sdn Bhd v Skyworld Holdings Bhd, the Malaysian Court of Appeal has held, for the first time, that an action for infringement can be based on the use of a registered mark as part of a trade or company name. Read more

17 Feb 2020

More encouraging news for owners of products with famous shapes: district court recognises distinctive nature of Chanel bags

A recent decision of the Seoul Central District Court in a case involving lookalike Chanel bags should encourage owners of products with famous shapes to consider taking more forceful steps to stop the sales of lookalikes in Korea. Read more

13 Feb 2020

First opposition to a collective mark in Singapore: Bavaria NV successfully opposes registration of BAVARIAN BEER

Singapore’s first opposition proceedings against an application for a collective mark highlight that collective  marks have a different function than regular trademarks. Read more

12 Feb 2020

Supreme Court confirms revocation of TOPPÍS in ice cream war

In the long-running dispute between ice cream manufacturers Emmessís ehf and Kjörís ehf, the Supreme Court of Iceland has upheld a First Appeal Court decision ordering the revocation of Kjörís ehf’s mark TOPPÍS for goods in Class 30.  Read more

11 Feb 2020

TIMBERLAND cuts down TIMBERZ

In a victory for international outdoors clothing company Timberland, the Patent and Market Court has found that there was a likelihood of confusion between the mark TIMBERZ and the earlier mark TIMBERLAND for clothing. Read more

10 Feb 2020

Supreme Court affirms transfer of ‘appear.in’ is reasonable remedy for infringement

The Norwegian Supreme Court has upheld a decision ordering the transfer of the domain name ‘appear.in’ on the grounds that its use constitutes infringement of the Norwegian trademark APPEAR TV. Read more

31 Jan 2020

Coty v Cosmopolitan Cosmetics: decoded products may be counterfeits

In a case involving the resale of fragrance products after the removal of their production codes, the US District Court for the Southern District of New York has held that the plaintiffs had stated a plausible claim that the decoded products were counterfeit goods. Read more

31 Jan 2020

CENTRAL PARK case: Delhi High Court rejects 'common to the trade' plea

In Central Park Estates Pvt Ltd v Godrej Skyline Developers Private Limited, the Delhi High Court has upheld an interim injunction in favour of Central Park Estates prohibiting Godrej Skyline Developers from using the mark GODREJ CENTRAL PARK. Read more

30 Jan 2020

Rotkäppchen-Mumm successfully defends its MM and MUMM marks

In Vins el Cep v EUIPO, the EU General Court has confirmed that there was a likelihood of confusion between the figurative trademark MIM NATURA and the earlier word marks MM and MUMM for Class 33 goods. Read more

30 Jan 2020

Corporate criminal liability gets first test for IP crimes

The People’s Court of Phu Tho Province has considered the first case involving the criminal liability of a corporate entity for IP crimes under Vietnam’s new Penal Code. Read more

29 Jan 2020

Ferrero Rocher: registration of packaging denied

Ferrero SpA has been dealt another blow in its attempt to register the packaging of its Ferrero Rocher chocolates as a trademark in Singapore. The case highlights the difficulty in establishing the distinctive character of shape marks, especially where they take the shape of the product itself. Read more

29 Jan 2020

No luck for Cambridge University’s challenge against CAMBRIDGE NEUROTECH

The appointed person has dismissed the University of Cambridge’s appeal against a UKIPO decision allowing an application for the figurative mark CAMBRIDGE NEUROTECH in Class 9.   Read more

28 Jan 2020

easyJet v easyBet - hosting provider ordered to take down infringing website

In a landmark decision, the Commercial Court of Argovia has held that the website at ‘easybet.com’ infringed the famous EASYJET trademark and ordered the Swiss hosting provider to take down the website. Read more

28 Jan 2020

Barcelona Court of Appeal upholds criminal sentence for possession of handbags infringing well-known registered design

The Barcelona Court of Appeal has upheld a condemnatory judgment sentencing the defendant to six months’ imprisonment for the possession of 240 handbags infringing a design belonging to the Robin Ruth Group. Read more

27 Jan 2020

Blow for JTI as application for figurative IJTI mark is upheld as valid

In Japan Tobacco Inc v EUIPO, the EU General Court has confirmed that there was no likelihood of confusion between IJ Tobacco Industry’s figurative mark IJTI and Japan Tobacco Inc’s earlier figurative mark JTI. Read more

24 Jan 2020

Court of Appeals refers to "fruits" of trademark infringement in landmark decision

Referring for the first time to the profits - or “fruits” – obtained by the defendant, Argentina’s Federal Civil and Commercial Court of Appeals has imposed the highest-ever amount of damages in a trademark infringement case. Read more

23 Jan 2020

Blow for Nestlé as General Court finds that it failed to establish reputation of its ONE mark

In Amigüitos pets & life v EUIPO, the General Court has scored one for the little guy against big hitter Nestlé. Read more

23 Jan 2020

When it’s all in the family: reverse confusion not a basis for broad trademark remedies

In Fabick Inc v JFTCO Inc, a trademark dispute originating from a family feud, the US Court of Appeals for the Seventh Circuit has addressed the issue of reverse trademark confusion and the scope of available remedies. Read more

22 Jan 2020

No free ticket for toys at the border: BMW successfully defends itself against lawsuit by toy manufacturer

Well-known car manufacturer BMW has successfully defended itself against a lawsuit filed by a toy car manufacturer in Germany. The plaintiff sought an injunction and damages following an allegedly inadmissible seizure of goods at the border. Read more

21 Jan 2020

Sony v EUIPO: when “annulment” really means “annulment”

The EU General Court has annulled a decision of the Fourth Board of Appeal of the EUIPO in revocation proceedings involving Sony’s mark VITA, as the board had failed to fulfil its obligation to hand down a fresh decision on all the relevant issues. Read more

21 Jan 2020

Weeded out of scope: UDRP designed to address specific cybersquatting issues

A recent decision involving the domain name ‘matrixmmj.com’ serves as a reminder that complex disputes, such as those between parties with current or past business relationships, generally fall outside of the UDRP’s scope. Read more

20 Jan 2020

BBC recovers its TOP GEAR trademark after two-year battle

The Russian Intellectual Property Court has overturned its earlier decision in a case involving the invalidation of the British Broadcasting Corporation’s TOP GEAR trademark. Read more

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Find an expert

Sarah Hadland
Director
Wallingford, United Kingdom
SH & Associates IP Ltd