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

Fleet Feet’s court victory against Nike highlights challenges in using and protecting slogan marks
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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Blow for Discovery as opposition against DISCOVERY CAMPS mark is rejected

The Intellectual Property Office of Singapore has rejected an opposition by media giant Discovery Communications LLC against the registration of the mark DISCOVERY CAMPS by a local company. Read more

3 Apr 2020

INDECOPI recognises notoriety of AMERICAN COLORS marks

In opposition proceedings against the registration of the mark AMERICAN COLORS in Class 25 in Peru, the Administrative Court of Appeals of INDECOPI has recognised the notoriety of two AMERICAN COLORS marks for goods in Class 2. Read more

2 Apr 2020

Prior use defence: trademark use must be continuous and voluminous

In a dispute between two mattress manufacturers over the use of the NO TURN mark, the High Court of Delhi has held that the prior use defence in a trademark infringement/passing-off action cannot be accepted where the use is intermittent and not voluminous. Read more

1 Apr 2020

Supreme Court holds that first sale doctrine still applies to sales of goods in violation of sales restrictions in licence agreement

In a blow for licensors in South Korea, the Supreme Court has held that a distributor which sold products that it believed to have been lawfully obtained from a trademark licensee was not criminally liable for trademark infringement. Read more

31 Mar 2020

adidas v H&M: H&M did not cross the line with its two-stripe sign

Following a 23-year-long trademark dispute between adidas and H&M, the Court of Appeal of The Hague has ruled that H&M’s use of a specific two-stripe sign on its sports clothing did not infringe adidas’s three-stripe mark. Read more

27 Mar 2020

easyGroup v Easyfly: relationship between jurisdiction and targeting in online trademark infringement

In easyGroup Ltd v Easyfly SA, the High Court has provided a helpful summary of the relationship between jurisdiction and targeting in online trademark infringements following claims of infringement, passing off and conspiracy brought by easyGroup against Colombian airline Easyfly. Read more

27 Mar 2020

Success for Cypriot halloumi producers as CJEU sends BBQLOUMI case back to General Court

In opposition proceedings involving the mark BBQLOUMI and the earlier collective mark HALLOUMI, the Court of Justice of the European Union has ruled in favour of the Cypriot halloumi producers and referred the case back to the General Court. Read more

26 Mar 2020

WIPO panel finds that Danish start-up Acubit engaged in reverse domain name hijacking

Technology start-up Acubit claimed that Danish trademark rules and practice should assign domain names to the relevant trademark owner. A panel from the WIPO Arbitration and Mediation Centre disagreed, as the UDRP governs in case of reverse domain name hijacking. Read more

25 Mar 2020

Energizer v Gillette: the fight over depreciation of goodwill in Canada keeps going and going

While the decision of Canada’s Federal Court of Appeal in Energizer Brands v The Gillette Company avoided squarely addressing the limits of claims for depreciation of goodwill under Section 22 of the Trademarks Act, the case may ultimately result in greater clarity. Read more

25 Mar 2020

Protected designation of origin: Nosecco evokes Prosecco

The decision of the UK Intellectual Property Office in opposition proceedings against a mark containing the word ‘Nosecco’ shows that protected designations of origin can benefit from a lower hurdle of evocation when compared with likelihood of confusion. Read more

24 Mar 2020

Bombay High Court comes down on infringers for copying BIG BROTHER and BIGG BOSS marks

The Bombay High Court has prevented Andaman Xtasea from using the ANDAMAN BIG BRO and ANDAMAN BIGG BOSS marks, as well as certain taglines and the depiction of an eye, ruling that it was nothing but an attempt to come as close as possible to Endemol’s marks and deceive the public. Read more

24 Mar 2020

Internet sales lead to personal jurisdiction, despite no physical presence

In Curry v Revolution, the US Court of Appeals for the Seventh Circuit has concluded that the plaintiff had made a prima facie showing that the defendants, who had no physical presence in the forum state, were subject to personal jurisdiction based on sales through an interactive website. Read more

23 Mar 2020

CJEU criticises General Court for using “less attractive” as measure of damage to marks with a reputation

In Tulliallan Burlington Ltd v EUIPO, the Court of Justice of the European Union has set aside the decisions of the General Court in opposition proceedings involving earlier marks with a reputation. Read more

20 Mar 2020

CJEU specifies at which stage “marketing circumstances” should be taken into account

The Court of Justice of the European Union has clarified that, although the marketing circumstances are a relevant factor in the application of Article 8(1)(b) of Regulation 207/2009, they are not to be taken into account at the stage of the assessment of the similarity of the signs. Read more

20 Mar 2020

No bad-faith registration? No UDRP transfer

A recent case involving the domain name ‘wekit.com’ illustrates that UDRP panels insist on bad-faith registration and use in accordance with the plain wording of the policy. Read more

19 Mar 2020

High Court confirms that BIG HORN marks infringe Red Bull’s EU trademarks

The High Court of England and Wales has confirmed that Big Horn’s marks, which consist of a ‘double ram’ device with the words ‘Big Horn’, infringed energy drink giant Red Bull’s EU trademarks. Read more

18 Mar 2020

Balmain case: do not gamble on specialised public where mark has low distinctive character

The EU General Court has upheld a decision of the Fifth Board of Appeal of the EUIPO rejecting luxury fashion house Balmain’s application for the registration of a figurative mark depicting a lion’s head in Classes 14 and 26. Read more

17 Mar 2020

LOCH NESS TONIC case: appointed person decision provides no tonic to appellant

This case highlights the importance of assessing whether it is appropriate to appeal against a UKIPO decision if the appeal relies on arguments that contradict those with which the hearing officer agreed at first instance. Read more

16 Mar 2020

Court of Appeal reverses own decision in WING CHUN case

In an action for the invalidation of the mark WING CHUN (a traditional Southern Chinese close-range combat style), the Turkish Court of Appeal has reversed its own opinion and held that the mark should be invalidated for some services in Class 41. Read more

16 Mar 2020

UDRP: bad-faith registration cannot be proved retrospectively

This recent UDRP decision highlights that bad faith cannot be established retrospectively by the circumstances following the registration of the domain name. Read more

13 Mar 2020

General Court: Board of Appeal erred in finding likelihood of confusion between CORNEREYE and BACKEYE

The General Court has annulled a decision of the First Board of Appeal of the EUIPO in opposition proceedings involving the marks CORNEREYE and BACKEYE, finding that the board’s decision was vitiated by an error of assessment. Read more

12 Mar 2020

US candy company’s licensee successfully prevents parallel import of trademarked goods

The Chinese licensee of US confectionery manufacturer Jelly Belly Candy Company has successfully sued two Chinese companies for importing products bearing the JELLY BELLY mark into China without the trademark owner’s authorisation. Read more

12 Mar 2020

Court of Appeal confirms that low-quality packaging is a legitimate reason to oppose further exploitation of luxury branded goods

In Brealey v Nomination Di Antonio E Paolo the Court of Appeal of England and Wales has confirmed that jewellery company Nomination was entitled to oppose the further commercialisation of its bracelet links by JSC Jewellery. Read more

11 Mar 2020

Allianz retains ROSNO mark following dispute with competitor

In the dispute between insurance companies Allianz and RESO-Chance, the Russian IP Court has ordered the partial termination of one of Allianz’s ROSNO marks for certain services, but found that the other marks had been put to genuine use during the relevant period. Read more

11 Mar 2020

Owner of VAGISIL successfully invalidates VAGISAN trademark

Personal care goods company Combe International has successfully relied on its VAGISIL marks to invalidate Dr August Wolff GmbH’s trademark VAGISAN in Singapore. Read more

10 Mar 2020

General Court annuls Board of Appeal decision due to misapplication of Article 7(1) of Regulation 6/2002

In Bog-Fran v EUIPO, the EU General Court has found that the Third Board of Appeal of the EUIPO had erred in its assessment of the evidence of disclosure of the earlier design and misapplied Article 7(1) of Regulation 6/2002. Read more

10 Mar 2020

UDRP: registration in bad faith is essential, even when the domain name is over 20 years old

A recent UDRP decision involving the domain name ‘koozies.com’ illustrates the importance of providing sufficient evidence of the reputation of a business and its trademark at the time of registration of the domain name. Read more

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Tae-Yeon Cho
Senior Partner
Seoul, South Korea
Cho & Partners