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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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16 Jun 2021

General Court annuls EUIPO decision in HISPANO SUIZA case

The General Court found that the EUIPO was wrong to rule out, as a matter of principle, the relevance of the ‘market practice’ criterion in its examination of the similarity of the goods. Read more

16 Jun 2021

Israeli court decides that Schweppes drink imported from Ukraine does not infringe SCHWEPPES mark

An Israeli district court has held that, despite the different sources of origin of the goods, a Schweppes drink imported from Ukraine did not infringe the trademark SCHWEPPES, owned by an Israeli drinks manufacturer. Read more

15 Jun 2021

Long-running dispute over STOLICHNAYA and MOSCOVSKAYA vodka marks reignited

Ownership of these vodka brands has been hotly contested since proceedings began in 2004. The Full Court of the Australian Federal Court recently allowed an appeal by two Russian state entities, reviving the battle between the parties. Read more

15 Jun 2021

Refusal of application for RING upheld on appeal

The Icelandic Board of Appeal has confirmed the partial refusal of the application for the mark RING on the ground that it was descriptive of certain goods in Class 9, including doorbells. Read more

14 Jun 2021

Court upholds Nivea Men passing-off claim

South Africa’s Supreme Court of Appeal has ruled in favour of Beiersdorf, finding that a shower gel product, Connie Men, passed off the long-established brand Nivea Men. The case is unusual in that one judge issued a robust dissenting judgment. Read more

11 Jun 2021

Apex court confirms that celebrities may sue for passing off of their own name

This groundbreaking decision of the Malaysian Federal Court, which is in line with decisions in other common law jurisdictions such as the United Kingdom and Australia, will be welcomed by Malaysian celebrities. Read more

11 Jun 2021

Trademark owner is no superhero under the UDRP

Trademark owners have no superpowers when it comes to the UDRP: as found out by the complainant in this case, the policy does not give each and every trademark owner free rein to ask for the transfer of a domain name incorporating its trademark. Read more

10 Jun 2021

MUSEUM OF ILLUSIONS: an ultimately illusory risk of confusion

This decision of the General Court reiterates that, where a sign consists of both figurative and word elements, it does not automatically follow that it is the word element which must always be considered to be dominant. Read more

9 Jun 2021

Success for Red Bull as Delhi High Court grants injunction against use of RED HORSE mark and label

Energy drinks giant Red Bull has successfully obtained an interim injunction preventing Bakewell Biscuits from using the mark RED HORSE and a label including a blue/silver trapezoid device. Read more

9 Jun 2021

Appointed person rejects applicant’s DIGIT on appeal

This decision highlights the importance of considering the purchasing act of the average consumer. Read more

8 Jun 2021

Good news for Italian Prosecco makers as application to register ‘Prosecco’ as a GI proceeds to registration

The Australian association of grape growers and wine producers has failed in its attempt to oppose the registration of ‘Prosecco’ as a GI for wines in Singapore. Read more

7 Jun 2021

Good news for Ford as General Court confirms likelihood of confusion between KUGA and KUGOO

The General Court has handed a victory to US car manufacturer Ford Motor Company, finding that there was a likelihood of confusion between Chinese company Yongkang Kugooo Technology’s mark KUGOO and Ford’s earlier KUGA marks in Class 12. Read more

4 Jun 2021

Blow for Puma as General Court rules on conditions governing application of Article 8(5)

The General Court confirmed that Puma had not demonstrated how Gemma Group’s mark, which represents a bounding feline and covers industrial products, might devalue the image of Puma’s earlier trademarks. Read more

4 Jun 2021

Regional Court of Appeal issues controversial reversal decisions

The Ankara Regional Court of Appeal has reversed several first-instance decisions on procedural grounds, even though the ground for reversal was not compatible with the appeal court’s reasons for reversal. Read more

3 Jun 2021

General Court finds no likelihood of confusion between octagonal water bottles

The General Court held that the selling arrangements for the bottles - either in the food aisles of supermarkets or in bars/restaurants - meant that, prior to purchase, consumers would concentrate mainly on the word and figurative elements on their labels. Read more

3 Jun 2021

Initial confusion? Relax, the Eighth Circuit has your number

In a dispute involving the marks SELECT COMFORT and SLEEP NUMBER for air mattresses, the US Court of Appeals for the Eighth Circuit has addressed a novel issue regarding when confusion must occur for it to be actionable. Read more

2 Jun 2021

High Court dismisses trademark infringement and passing-off claims in POLO CLUB case

The High Court of England and Wales has dismissed all claims of passing off and infringement of the BEVERLY HILLS POLO CLUB logo due to the use of the GREENWICH POLO CLUB logo. Read more

2 Jun 2021

Court finds no infringement in VinnGroup v Vinnergi

This decision of the Swedish Patent and Market Court highlights the difficulties faced by plaintiffs claiming to benefit from enhanced protection due to the existence of a family of marks. Read more

1 Jun 2021

Supreme Administrative Court finds likelihood of confusion between PUMA and RUMA despite significant conceptual differences

In a victory for Puma SE, Finland’s Supreme Administrative Court has overturned a decision of the Market Court finding that there was no likelihood of confusion between the marks PUMA and RUMA for Class 25 goods. Read more

28 May 2021

Bottle designs held to produce different overall impressions on informed user

The General Court confirmed that the differences between the designs, which represented beverage bottles, could be perceived by the informed user, notwithstanding the fact that the designs shared the same shape resembling the structure of a dumbbell. Read more

28 May 2021

Important modifications to the Industrial Property Law: what you need to know

The recently-approved amendments to the Chilean Industrial Property Law represent an important legislative milestone, with some of the changes - such as the introduction of non-use cancellation actions - having been on the table for years. Read more

27 May 2021

Supreme Court softens conditions for bad-faith claims

This decision the Turkish Supreme Court should encourage right holders to fight against bad-faith applications, regardless of whether their marks are in use or have a reputation on the Turkish market. Read more

26 May 2021

Priority periods do the long jump: RCD may claim priority from PCT application within 12 months

In a case involving applications for registered Community designs designating sports equipment, the General Court has stressed that the nature of the earlier right based on which priority is claimed is decisive to determine the duration of the priority period. Read more

26 May 2021

Supreme Court confirms that use of later-registered mark can infringe earlier-registered mark in landmark decision

As a result of this decision of the Korean Supreme Court, it is now possible for a senior trademark owner to directly assert its trademark rights against the owner of a later-filed trademark in the courts, without having to first invalidate the later-filed trademark. Read more

25 May 2021

ABB wins rare private criminal prosecution and puts counterfeiter in jail for three-and-a-half years

This is a very rare win in China: there have been only a handful of private prosecutions brought by brand owners over the past decades, and very few were supported by the courts. Read more

24 May 2021

General Court provides guidance on bad faith in TORNADO case

The General Court stressed that, in the case of an application for invalidity under Article 52(1)(b) of Regulation 207/2009, there is no requirement whatsoever that the applicant for that declaration be the proprietor of an earlier mark for identical or similar goods or services. Read more

24 May 2021

ITDC: ‘inadequately-tailored and doomed complaint’?

This decision illustrates the importance of disclosing all the evidence available to support a UDRP complaint, as well as the risks resulting from withholding information that is also likely to be used by the respondent. Read more

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Yanling Zheng
Partner
Beijing, China
ZY Partners
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