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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

Beiersdorf v Koni: passing off and a composite of get-ups

In Beiersdorf AG v Koni Multinational Brands (Pty) Ltd, the South African High Court has considered the use by one party of a get-up that was a composite of various get-ups used by another party. Read more

Today

Trump International loses High Court appeal

The High Court has upheld a decision of the UK Intellectual Property Office finding that the application for TRUMP TV, filed by ‘trademark troll’ Michael Gleissner in the name of Trump International Limited, had been made in bad faith. Read more

21 May 2019

ILPTO upholds registration of former Soviet trademarks for sweets

The Israel Patent and Trademark Office has considered an interesting dispute concerning several marks registered in the name of two major Russian confectionery manufacturers for sweets from the Soviet era. Read more

21 May 2019

Smooth victory for Bega in peanut butter trade dress case against Kraft

A dispute between Bega Cheese and Kraft Foods in Australia has been resolved with the Federal Court awarding Bega the exclusive rights to use a distinctive yellow, red and blue packaging to market its peanut butter.  Read more

20 May 2019

Federal Circuit: trademark decisions rendered by International Trade Commission do not have preclusive effect

In Swagway LLC v International Trade Commission, the US Court of Appeals for the Federal Circuit has held that trademark decisions of the International Trade Commission, like its patent decisions, do not have preclusive effect. Read more

20 May 2019

Licensor prevails in dispute over use of brand name post-termination

A recent case in India has addressed the question of whether a licensee can claim rights in a licensed mark when faced with the termination of the licence agreement. Read more

17 May 2019

Supreme Court clarifies conditions for existence of legal interest in non-infringement action

In a dispute between wine and spirits producers Kantina and Adol, the Slovenian Supreme Court has set aside the first and second-instance decisions, which had rejected a non-infringement action filed by Kantina on formal grounds. Read more

17 May 2019

GLENFIDDICH v GLENFIELD: battle of the label trademarks

The UK Intellectual Property Office has issued a somewhat unexpected decision in a case involving an application for the label mark GLENFIELD by an India-based drinks company owner, which was opposed by Scotch whisky distiller William Grant & Sons. Read more

16 May 2019

Vested rights clause restores trademark to original applicant

In Sköld v Galderma Laboratories LP, the US Court of Appeals for the Third Circuit has addressed the issue of trademark ownership under since-terminated development and commercialisation agreements. Read more

16 May 2019

General Court reaffirms that new relative grounds for refusal cannot be raised after expiry of relevant period

In Lupu v EUIPO, the EU General Court has confirmed that, within the context of opposition proceedings, relative grounds for refusal cannot be raised after the expiry of the term prescribed by law. Read more

15 May 2019

EU Trademark Court issues another ruling on use of well-known marks to sell smell-alike perfumes

Spain’s EU Trademark Court has upheld a first-instance decision in which Equivalenza Retail SL had been sentenced for infringing various trademarks, owned by Hugo Boss, Gucci and Lacoste, among others, in the context of its smell-alike business.  Read more

14 May 2019

TICK DIFFERENT: Apple loses to watchmaker Swatch before Swiss court

The Swiss Federal Administrative Court has considered an opposition filed by US tech giant Apple against Swiss watchmaker Swatch’s application for the registration of the mark TICK DIFFERENT for Class 14 goods, including jewellery and watches. Read more

13 May 2019

Delhi High Court directs drug authorities to regulate misuse of similar brand names

The decision of the Delhi High Court in Curewell Drugs & Pharmaceuticals v Ridley Life Science creates a strict action plan from the moment that a drug and its packaging are created. Read more

3 May 2019

Court of Appeal finds yet another registered Community design valid but not infringed 

The decision of the Court of Appeal of England and Wales in PulseOn Oy v Garmin (Europe) Limited follows a line of cases in which designs have been found to be valid but not infringed, taking into account the degree of design freedom in more technical designs. Read more

3 May 2019

Federal Court decision may seriously restrict value of design protection for part of article

In GM Global Technology Operations LLC v SSS Auto Parts Pty Ltd, the Federal Court of Australia has considered the application of the ‘spare parts’ defence provided by Section 72 of the Designs Act. Read more

2 May 2019

High Court clarifies legal position on conflicting trademark and business name rights

A recent Kenyan High Court decision has clarified the legal position in respect of the conflict between trademark and business name rights, which has arisen primarily because the trademarks registry and the business names registry are not interlinked. Read more

2 May 2019

Success for Inditex as General Court upholds appeal in ZARA case

The EU General Court has upheld an appeal by Inditex, the owner of the mark ZARA, finding that use of the figurative ZARA mark would give rise to a risk of unfair advantage being taken of Inditex’s mark. Read more

1 May 2019

Criminal sentence handed down to importers of shoes infringing adidas’s trademarks and designs

The Court of Appeal of Valencia, acting as a trial court, has sentenced two defendants to one-and-a-half years in prison for importing several thousands of pairs of counterfeit adidas shoes for commercial purposes. Read more

30 Apr 2019

General Court: outward use not necessarily aimed at end consumers

In Hesse v EUIPO, the EU General Court has upheld a decision of the First Board of Appeal of the EUIPO in revocation proceedings involving the mark TESTA ROSSA, rejecting arguments relating to proof of use and equal treatment. Read more

29 Apr 2019

Success for Absolut as EU Trademark Court of Appeal finds infringement of well-known marks for shape of Malibu bottle

Section 8 of the Alicante Court of Appeal, acting as the EU Trademark Court, has declared that a product marketed under the name Ibiza Beach infringed The Absolut Company AB’s trademarks for the shape of its Malibu bottle. Read more

29 Apr 2019

CJEU calls time on The Green Effort Limited v EUIPO case

The decision of the Court of Justice of the European Union in The Green Effort Limited v EUIPO shows that the calculation of time limits is critical to every case and that the courts will not hesitate to enforce such time limits. Read more

26 Apr 2019

Opposition Division finds likelihood of confusion between SO DIVINE and SO…? LOVELY

The Opposition Division of the EUIPO has partially upheld an opposition against the registration of the figurative mark SO DIVINE due to a likelihood of confusion with earlier SO…? LOVELY marks. Read more

25 Apr 2019

The limits of "rights" in a personal name and the boundaries of the UDRP

A recent decision under the UDRP concerning the domain name ‘eladeden.com’ illustrates the limits of “rights” in a personal name, which do not constitute trademark rights per se, as well as the boundaries of the UDRP, which is intended to deal with clear-cut cases of cybersquatting. Read more

25 Apr 2019

General Court: Board of Appeal should have examined alleged enhanced distinctiveness of earlier mark

The EU General Court has annulled a decision of the First Board of Appeal of the EUIPO in which the latter had found that there was no likelihood of confusion between the trademarks BALEA and ALBÉA. Read more

24 Apr 2019

General Court: common figurative elements will make an impression on consumers, despite their weak distinctive character

In Užstato sistemos administratorius VŠĮ v EUIPO, the EU General Court has confirmed that there was a likelihood of confusion between two purely figurative marks for recycling-related services. Read more

24 Apr 2019

Another blow for HBO as opposition against GAME OF VAPES fails

Game of Thrones producer HBO has suffered another defeat before the UK Intellectual Property Office: following on from a decision in which registration of GAME OF STONES was allowed for beer, the office has rejected HBO’s opposition against GAME OF VAPES for tobacco products. Read more

23 Apr 2019

Last one to use is a rotten egg! Court of Appeal issues its decision in Galway Free Range Eggs Limited v O’Brien

A recent case which went all the way to the Irish Court of Appeal illustrates the difficulties faced by new market entrants when trying to come up with a safe name to avoid potential action from existing market leaders. Read more

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Trending

1

General Court reaffirms that new relative grounds for refusal cannot be raised after expiry of relevant period

2

Vested rights clause restores trademark to original applicant

3

EU Trademark Court issues another ruling on use of well-known marks to sell smell-alike perfumes

4

Supreme Court clarifies conditions for existence of legal interest in non-infringement action

5

Licensor prevails in dispute over use of brand name post-termination

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Djura Mijatovic
Barrister
Alicante, Spain
Zivko Mijatovic & Partners
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