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Analysis: Case Law

How lawyers tackled infringing Michael Jordan Chinese translation marks that were too old to invalidate

GEN Law Firm partner Steve Zhao and associate Pei Lyu reveal the intricacies of the arguments that made them successful in the Shanghai court.

How lawyers tackled infringing Michael Jordan Chinese translation marks that were too old to invalidate
US Supreme Court denies certiorari to parody case, leaving Ninth Circuit open to forum shopping, expert says
13 Jan 2021

US Supreme Court denies certiorari to parody case, leaving Ninth Circuit open to forum shopping, expert says

Trademark experts say that the move has left the Ninth Circuit as the “go-to circuit for declaratory actions for non-infringement”.

US Supreme Court urged to rule on treatment of parody after Jack Daniel’s petition
22 Oct 2020

US Supreme Court urged to rule on treatment of parody after Jack Daniel’s petition

If the court grants certiorari, it will once again be weighing in on a case that reconsiders how free speech interplays with commercial trademark rights.

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26 Feb 2021

General Court rejects late amendment of list of goods

This decision of the General Court highlights that, if an applicant wishes to overcome a distinctiveness issue by amending the list of goods/services, this should be done at the first instance. Read more

25 Feb 2021

New Balance wins landmark legal battle in fight against copycat

New Balance has won a major legal battle against one of China’s most prolific copycats, New Barlun, with a Shanghai court awarding New Balance damages of Rmb25 million - the largest amount that the company has ever received in China. Read more

25 Feb 2021

New mandatory precedent regarding the use of a trademark consisting of packaging

In cancellation proceedings involving a trademark consisting of the Sunny Girl dolls packaging, Peru's Administrative Court of Appeals has established a new mandatory precedent concerning the proof of use of a trademark consisting of packaging. Read more

24 Feb 2021

General Court confirms lack of likelihood of confusion between PANTHÉ and PANTHER in Class 25

In an arguably surprising decision, the General Court has agreed with the EUIPO that there was no likelihood of confusion between the figurative mark PANTHÉ and earlier word and figurative marks PANTHER in Class 25. Read more

23 Feb 2021

NOTHING BUT strong evidence of confusion will suffice in a New Zealand spill-over reputation case

This decision of the assistant commissioner demonstrates both the strengths and pitfalls of New Zealand’s unique ‘reverse onus’ opposition ground. Read more

23 Feb 2021

Board of Appeal confirms lack of likelihood of confusion between FASHION TV marks

The Board of Appeal has upheld a decision of the Icelandic Intellectual Property Office finding that there was no risk of confusion between two word-and-design marks containing the word element ‘fashion tv’. Read more

22 Feb 2021

No more bites at the Apple: intervening junior user can force you to get your head out of the cloud(s)

In a longstanding dispute between by RXD Media LLC and Apple Inc over rights to use the IPAD mark, the US Court of Appeals for the Fourth Circuit has considered how the success of a mark’s intervening junior user - here, Apple - can affect a senior user. Read more

22 Feb 2021

Success of online training seminars for law enforcement officers continues

Last year, against the background of the covid-19 pandemic, the first online training seminars for law enforcement officers specialised in IP matters took place in Peru. This type of training presents several advantages and has continued to prove popular this year. Read more

18 Feb 2021

Mondelez wins lilac packaging case in Croatia

The Supreme Court has put an end to the long-running dispute between Kraft Foods Schweiz Holding GmbH (part of Mondelez International Group) and Croatian confectionery producer Kraš over the latter’s use of the colour lilac for its packaging. Read more

11 Feb 2021

General Court: milk substitute slogan has minimum degree of distinctive character required by Article 7(1)(b)

In a decision that clarifies the requirements for registering trademarks consisting of slogans, the General Court has annulled a EUIPO decision finding that the mark IT’S LIKE MILK BUT MADE FOR HUMANS was devoid of any distinctive character. Read more

8 Feb 2021

General Court upholds likelihood of confusion between bull wine marks

In opposition proceedings between two wine companies, the General court has confirmed that there was a likelihood of confusion between the marks SANGRE DE TORO and CABEÇA DE TOIRO. Read more

8 Feb 2021

Tecme out: panel refuses to transfer ‘tecme.com’ and enters finding of RDNH

This decision illustrates that UDRP complainants must convincingly establish the existence of their trademarks or their reputation at the time the domain name was registered in order to prove bad faith. Read more

4 Feb 2021

Madrid Court of Appeal confirms sentence for commercialisation of products infringing musical groups’ trademarks

The Madrid Court of Appeal has upheld a trial court decision in which the defendants were sentenced to nine months’ imprisonment and ordered to pay a fine for illegally reproducing marks of musical groups, including those of Iron Maiden. Read more

1 Feb 2021

Good news for Bacardi as General Court finds likelihood of confusion between 42 BELOW and BLEND 42 VODKA

The EU General Court has confirmed that there was a likelihood of confusion between the figurative mark BLEND 42 VODKA and Bacardi & Co Ltd’s earlier 42 BELOW marks in Classes 33 and 35. Read more

1 Feb 2021

IPEC considers post-sale confusion and passing off in fashion industry

The UK’s Intellectual Property Enterprise Court has handed a decisive victory to Italian fashion company Freddy SpA in a case that considers the role that passing off, patents and unregistered designs can play in combatting copycats in the fashion industry. Read more

28 Jan 2021

What’s cookin’? Federal Circuit finds no likelihood of confusion between two KITCHEN marks

In this dispute between rival operators of combination gas stations/convenience stores, the US Court of Appeals for the Federal Circuit has addressed the assessment and application of the DuPont ‘likelihood of confusion’ factors. Read more

22 Jan 2021

No likelihood of confusion between BIM FREELANCE and BIM READY due to relevant public’s high level of attention

In this arguably debatable decision, the EU General Court concluded - contrary to the EUIPO - that there was no likelihood of confusion between BIM READY and BIM FREELANCE for “training services” in Class 41. Read more

22 Jan 2021

Vans successfully registers iconic ‘Checkerboard Slip-On’ design for trainers

The Peruvian Trademark Office’s Direction of Distinctive Signs has upheld an appeal by Vans Inc claiming that its internationally famous ‘Checkerboard Slip-On’ design has a high level of distinctiveness and is associated with a specific business origin. Read more

21 Jan 2021

A not so EASY task after all: easyGroup’s EASY mark found to be devoid of distinctive character

easyGroup’s attempt to strengthen its rights in the EASY family of marks has been thwarted by the UKIPO, which refused to register the mark EASY for various services in Classes 35, 39 and 43. Read more

20 Jan 2021

E-BOKS v EBOX: a trademark setback that e-Boks didn’t sign up for

Following a victory at the Swedish Patent and Market Court, electronic signature provider e-Boks was dealt a blow when the appeal court found that there was no likelihood of confusion between E-BOKS and EBOX. Read more

20 Jan 2021

CNIPA clarifies that confusing colours can make a mark infringing

Additional certainty on whether the colour choices for a mark can make it infringing has been issued following a case involving Tommy Hilfiger’s famous flag. Read more

19 Jan 2021

This mash-up is not a place you’ll go: Seuss copyright will ‘live long and prosper’

In a case involving a Dr Seuss and Star Trek mash-up, the US Court of Appeals for the Ninth Circuit considered claims of both copyright and trademark infringement. Read more

19 Jan 2021

IN v IN BAR: US nutrition company Weider successful in Singapore opposition proceedings

Weider Global Nutrition, the owner of the mark IN and ‘in’-formative marks in Class 32, has prevailed in opposition proceedings against the registration of IN BAR for nutritional supplements in Class 5. Read more

18 Jan 2021

In-N-Out makes mincemeat of Hashtag Burgers

US fast-food restaurant chain In-N-Out Burgers objected to the use of DOWN-N-OUT by Hashtag Burgers in Australia. The decision shows that it is not necessary to have a place of business in the country in order to maintain a passing-off action. Read more

18 Jan 2021

Court of Appeals finds likelihood of confusion between short marks in surprising decision

In this somewhat controversial decision, the Turkish Court of Appeals seems to have changed its approach to the role of weak trademarks in the assessment of confusing similarity. Read more

15 Jan 2021

Stricter requirements for proving use of a trademark through invoices

The National Service of Intellectual Rights of Ecuador has recently issued several resolutions which have radically changed the criteria for using invoices as proof of use. Read more

14 Jan 2021

Courts uphold TRAB decision to invalidate trademark consisting of Mongolian place name

These invalidation proceedings involving the mark 阿尔山 - the Chinese transliteration of ‘Aershan’, a city in Inner Mongolia - have been selected as one of the top 10 “Exemplary Cases of Trademark Grant and Affirmation of the Year 2019”. Read more

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Saul Santoyo Orozco
Senior Partner
Mexico City, Mexico
Uhthoff, Gómez Vega & Uhthoff SC
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