Analysis: Case Law

Trademark litigation in Brazil: 12 key questions answered

In the second part of this focus on enforcement in Brazil series, 12 key questions on litigation processes and strategies are answered.

Trademark litigation in Brazil: 12 key questions answered
7 Aug 2019

Return of the Supermac’s: Irish chain delivers another blow to McDonald’s 

The EUIPO has partially invalidated McDonald’s EU trademarks for the ‘Mc’ prefix. As with the recent BIG MAC decision, McDonald’s was deemed to have submitted insufficient evidence to claim use for the disputed marks.

31 Jul 2019

Plucked wings: breaking down the CJEU’s invalidation of two Red Bull colour trademarks 

A protracted case came to a close this week when Red Bull’s appeal to the Court of Justice of the European Union was dismissed. One of the intervenor’s representatives told WTR that the decision should not have any direct impact on existing colour marks.

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Delhi High Court: use of word that is prominent in registered logo mark amounts to infringement

In Max Healthcare v Sahrudya Health Care, the Delhi High Court has held that the use by the defendant of a word that was prominent in the plaintiff’s logo marks amounted to infringement. Read more

Today

CJEU clarifies jurisdiction in online infringement cases: the consumers' country is the place of infringement

In a victory for trademark owners, the Court of Justice of the European Union has clarified the issue of jurisdiction in cases involving the online infringement of EU trademarks. Read more

18 Sep 2019

Roughing the applicant: USPTO refuses Tom Brady’s TOM TERRIFIC trademark applications

The USPTO has refused New England Patriots quarterback Tom Brady’s applications for TOM TERRIFIC in Classes 16 and 25, finding that the mark was “uniquely and unmistakably” associated with former New York Mets pitcher Tom Seaver. Read more

18 Sep 2019

New Balance foiled in its attempt to invalidate 百伦 marks

A recent case involving New Balance and its Chinese-character mark 新百伦 highlights the difficulties faced by foreign companies seeking to adopt a Chinese mark to engage with Chinese consumers. Read more

16 Sep 2019

Delhi High Court: VISTARA deserves to be recognised as well-known mark

In Tata Sia Airlines Ltd v Pilot 18 Aviation Book Store, the Delhi High Court has permanently restrained the defendants from using the trademark VISTARA and directed them to pay Rs200,000 in costs to the plaintiff. Read more

16 Sep 2019

MONOPOLY case: a new light on bad faith?

The decision of the Board of Appeal of the EUIPO in invalidity proceedings involving Hasbro Inc’s mark MONOPOLY marked a new approach in the application of the concept of ‘bad faith’ under Article 59(1)(b) of the Trademark Regulation. Read more

13 Sep 2019

Figurative mark RIMI GOODLIFE found to be similar to word mark GOODLIFE

The Appeals Division of the Lithuanian State Patent Bureau has upheld an opposition filed by Goodlife Foods Limited against the registration of the figurative mark RIMI GOODLIFE by ICA AB. Read more

13 Sep 2019

Defensive trademark registrations: the adidas and Mastercard cases

In two recent cases, defensive EU trademarks belonging to adidas and Mastercard have been cancelled on the grounds of non-use. Read more

12 Sep 2019

AUDI v AUDITRAINING: misunderstanding the concept of dilution of notorious trademarks

In opposition proceedings filed by Audi AG against the registration of the mark AUDITRAINING in Class 41, the National Trademark Office of Colombia has arguably misunderstood the concept of dilution of notorious trademarks. Read more

12 Sep 2019

Chanel loses Chinese trademark infringement case involving ‘double C’ logo

In a rare loss for French fashion house Chanel, the Guangzhou IP Court has vacated a decision of the Haizhu District People’s Court in which the latter had found that the sale of jewellery in the shape of Chanel’s ‘double C’ logo constituted trademark infringement. Read more

11 Sep 2019

Travel portal to face trial in criminal proceedings for trademark infringement

In a dispute involving travel portals Ezeego and Make My Trip, the Bombay High Court has refused to quash an order for issuance of summons passed by the Magistrate’s Court in criminal proceedings for trademark infringement. Read more

11 Sep 2019

Blow for Puma as Danish court confirms dismissal of invalidity action

The Danish Maritime and Commercial High Court has upheld a decision of the Patent and Trademark Office dismissing an invalidity action filed by Puma against a registered trademark consisting of a stripe.   Read more

10 Sep 2019

CJEU: single clinical trial not sufficient for genuine use

In Viridis Pharmaceutical Ltd v EUIPO, the Court of Justice of the European Union has confirmed that there was no genuine use of Viridis’ trademark BOSWELAN on a pharmaceutical product nor proper reasons for non-use. Read more

9 Sep 2019

EU-Vietnam Free Trade Agreement and how it affects trademarks, GIs and enforcement

The EU-Vietnam Free Trade Agreement, which was signed on 30 June 2019, has been described by the European Union as “the most ambitious free trade deal ever concluded with a developing country”. The agreement is expected to bring many changes to Vietnam’s IP regulations. Read more

9 Sep 2019

Federal Court clarifies limitation of own name defence

In Mitolo Wines Aust Pty Ltd v Vito Mitolo & Son Pty Ltd, the Federal Court of Australia has found that use of the name V. Mitolo and Son infringed trademark registrations for the mark MITOLO in relation to wine. Read more

6 Sep 2019

Dutch court of appeal sets up confidentiality club in IP proceedings

In a promising development, the Court of Appeal of The Hague has set up a confidentiality club to allow the alleged infringer to submit confidential information in trademark proceedings. Read more

5 Sep 2019

Rhyme as the reason: Seventh Circuit’s decision in SportFuel Inc v PepsiCo Inc

In SportFuel Inc v PepsiCo Inc, the US Court of Appeals for the Seventh Circuit has upheld a summary judgment decision for the defendants based on fair use of a descriptive expression, despite the plaintiff’s trademark registrations of the same expression. Read more

16 Aug 2019

When a domain name is dropped, you need the best catcher in your team

A recent decision involving the domain name ‘ogio.com.au’ under the ‘.au’ Dispute Resolution Policy is an important reminder of how panels can have different approaches to the same facts in complex cases.   Read more

16 Aug 2019

Fifty years later, Woodstock festival gains right to sell WOODSTOCK-branded marijuana 

Woodstock Ventures, the owner of the Woodstock music festival, has won the right to use the mark WOODSTOCK to sell cannabis products in commemoration of the 50th anniversary of the famous music festival. Read more

15 Aug 2019

Belgian appeal court tosses SPA Mineral Water’s trademark infringement claims: third parties free to use and register SPA for cosmetic products

A groundbreaking decision of the Ghent Court of Appeal has significantly increased the chances for third parties to successfully register their SPA brand in Class 3 at the Benelux and EU level. Read more

15 Aug 2019

General Court: genuine use may be established if mark as used differs from mark as registered only in insignificant respects

The decision of the EU General Court in mobile.de v EUIPO highlights that a mark owner may, in the commercial exploitation of the sign, make variations which, without altering its distinctive character, enable it to be better adapted to the requirements of the goods or services concerned. Read more

13 Aug 2019

Keeping up with the Jonesies: UDRP panel refuses to transfer ‘littlejonesies.com’

A recent UDRP decision involving the domain name ‘littlejonesies.com’ highlights the importance of establishing a prima facie case of lack of legitimate interest when a domain name includes the registrant's name.  Read more

13 Aug 2019

Blow for Red Bull as CJEU confirms invalidity of blue and silver colour marks

In Red Bull Gmbh v EUIPO, the Court of Justice of the European Union has dismissed an appeal against a General Court decision upholding a finding of invalidity in respect of Red Bull’s blue and silver colour marks. Read more

12 Aug 2019

IP owners may be awarded more than minimum damages based on ‘40% rule’

A Circuit Court has held that judges can impose both compensatory damages for the loss suffered and punitive damages based on the ‘40% rule’ under Article 221bis of the Mexican Industrial Property Law. Read more

12 Aug 2019

Court of Cassation issues long-awaited decision on non-use revocation actions

The Turkish Court of Cassation has considered for the first time the legal gap created by the annulment of Article 14 of Decree-Law No 556, which regulated the use requirement for trademarks. Read more

9 Aug 2019

Does trademark squatting vitiate registered trademark rights? The Shan Yin case

The China National IP Administration has recently selected the Shan Yin case as one of the model cases for 2018. The case is particularly significant as it appears to anticipate changes to the Trademark Law that will become effective later this year.     Read more

8 Aug 2019

Pampered Chef succeeds in trademark infringement battle

Pampered Chef, a world leader in the sale of premium kitchenware products, has succeeded at trial in defending trademark infringement, passing off and dilution and depreciation of goodwill claims brought by Canada's largest retailer, Loblaws. Read more

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