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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.

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29 Jul 2021

Sound marks in the European Union: General Court rules for the first time on registration of sound mark submitted in audio format

An audio file containing the sound made by the opening of a drinks can, followed by silence and a fizzing sound, cannot be registered as a trademark for various drinks and metal containers for storage or transport. Read more

29 Jul 2021

Supreme Court confirms that use of third-party trademarks for smell-alike perfumes is unlawful

The Supreme Court has dismissed the appeal filed by smell-alike perfume company Equivalenza over claims of trademark infringement. The court, referring to L’Oréal v Bellure, held that Equivalenza took advantage of the reputation of perfumes of well-known brands. Read more

28 Jul 2021

Requirements for proof of use - a textbook treatise by the General Court

In these proceedings for the revocation of the mark I-COSMETICS for non-use, the General Court has laid down in textbook fashion the requirements for proof of use of a trademark. Read more

28 Jul 2021

Chevron unsuccessful in red canopy fascia case

This decision of the Federal Court of Australia highlights that, if the colour of a building is central to a brand, then it should be expressly dealt with in any licence agreement, separate from other branding components. Read more

27 Jul 2021

French Supreme Court issues decision in Morbier case following CJEU’s preliminary ruling

Late last year, the CJEU issued a preliminary ruling on some questions concerning the reproduction of the shape or appearance of a product (here, Morbier cheese) protected by a PDO. The French Supreme Court has now issued its decision based on the CJEU’s answers. Read more

27 Jul 2021

‘anticoupang.com’ decision: free speech and the UDRP

This decision highlights that trademark owners should carefully consider whether a UDRP complaint is an appropriate tool when faced with genuine criticism websites. Read more

26 Jul 2021

Trademark Office backs Xiaomi in opposition against copycat MI logo

This case was recently selected as one of the Chinese Trademark Office’s “Exemplary Trademark Opposition and Adjudication Cases of 2020”. Read more

23 Jul 2021

Is Pirelli’s ‘tyre groove’ trademark valid?

The Court of Justice of the European Union has issued its decision in the decade-long dispute between Italian tyre manufacturer Pirelli Tyre SpA and Japanese company The Yokohama Rubber Co Ltd. Read more

22 Jul 2021

Trouble in paradise (island)? No double territoriality requirement for EU trademark use

This decision of the First Board of Appeal of the EUIPO provides a useful explanation of the territoriality aspect of the genuine use requirement. Read more

21 Jul 2021

UDRP: caution required for less fanciful trademarks

UDRP complainants should exercise caution when their trademarks are not completely fanciful, especially where the marks also consist of dictionary terms in certain languages. Read more

21 Jul 2021

No stop for NOMAD

The General Court found that the relevant public would not immediately perceive the word ‘nomad’ as referring to the idea of travel and, in any event, this would not emphasise a positive quality of the goods. Read more

20 Jul 2021

Court of Appeal: directors jointly and severally liable as accessories, but only liable to account for own profits

In this appeal arising from a trademark dispute involving two POLO CLUB marks, the Court of Appeal has considered for the first time whether accessories should be liable to account not only for their individual salaries, but also for the principal's profits. Read more

20 Jul 2021

High Court issues landmark decision on industrial design infringement

This is first time that the High Court of Uganda has considered the issue of the infringement of industrial design rights. Read more

19 Jul 2021

New mandatory precedent regarding assessment of genuine interest in Andean opposition

According to a recent resolution of the Administrative Court of Appeals, the assessment of the genuine interest - based on a trademark application or a registered trademark - in an Andean opposition must be evaluated at the time of filing of the opposition. Read more

16 Jul 2021

Facetec saves face in ZOOM dispute

This decision of the General Court will be of particular interest to tech companies and brand owners within the software space. Read more

16 Jul 2021

Budding cannabis entrepreneur learns the hard way that parody doesn’t play

The Federal Court of Canada has granted the Subway restaurant trademark owner a permanent injunction enjoining a cannabis dispensary from using the parody trademark BUDWAY. Read more

15 Jul 2021

The importance of the proof of use in the recognition of the risk of confusion: a reminder of the fundamentals

Where genuine use has been proven in connection with some of the goods covered by the mark on which an opposition is based, the EUIPO is entitled to restrict its assessment of the likelihood of confusion to those goods alone. Read more

13 Jul 2021

SKY v SKYLINERS: how to prove entitlement to file an opposition as a licensee

In these opposition proceedings between Sky plc and Skyliners GmbH, the General Court considered the requirements that must be met by a licensee in order to prove that it is authorised to file an opposition on the basis of earlier EU marks. Read more

13 Jul 2021

Godrej case: re-examining the jurisdiction of the Commercial Court

Twenty-one years after the Kibo Match decision, in which the Commercial Court’s jurisdiction to entertain trademark disputes was questioned for the first time, the Commercial Court has re-affirmed its competence in Godrej v Target. Read more

12 Jul 2021

IPEC hands down cautionary verdict after unjustified threats made by distributor towards legitimate trader

The Intellectual Property and Enterprise Court has made a rare finding that an allegation of infringement amounted to an actionable unjustified threat of trademark infringement proceedings under Section 21A of the Trademarks Act. Read more

9 Jul 2021

General Court provides guidance on assessing bad faith in ENTEROSGEL case

In invalidity proceedings between Health Product Group and Bioline Pharmaceutical AG, the General Court confirmed that the predecessor in law to Bioline had not acted in bad faith when designating the European Union in respect of the international registration for ENTEROSGEL. Read more

9 Jul 2021

Opposition against OT TANGO succeeds on grounds of confusing similarity and passing off

GCIH Trademarks Limited, the owner of the TANGO mark for chocolate and cocoa products, has prevailed in its opposition against a competitor’s application to register OT TANGO in Singapore for identical goods. Read more

7 Jul 2021

HYAL decision highlights importance of relevant public in assessing registrability

The General Court confirmed that the relevant public, which consisted of professionals, would understand Fidia farmaceutici's mark HYAL as a direct reference to hyaluronic acid. Read more

7 Jul 2021

Publication of two new mandatory precedents regarding cancellation actions

Two new mandatory precedents concerning cancellation actions were recently published in Peru’s official gazette. One of the issues considered was whether the same evidence may prove the use of two or more trademarks in different cancellation actions. Read more

6 Jul 2021

Appeal court confirms $1.4 million infringement award in favour of L’Occitane

The case is yet another example of a multinational company successfully asserting its IP rights in China, which is increasingly becoming a destination for litigation. Read more

6 Jul 2021

Thomas v Luv One Luv All Promotions Ltd: latest instalment in band member dispute sees successful appeal against IPEC judgment

This decision of the Court of Appeal highlights the danger of leaving issues of ownership to be decided only after members of a band have decided to go their separate ways. Read more

5 Jul 2021

General Court provides guidance on bad faith in RIVIERA AIRPORTS case

The General Court has confirmed that the applications to register the marks RIVIERA AIRPORT/RIVIERA AIRPORTS had not been filed in bad faith, focusing, among other things, on the coherent business strategy displayed by the owner of the marks. Read more

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Scott S Christie
Partner
Newark NJ, United States
McCarter & English LLP
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