Analysis: Case Law

Ferrari partially loses iconic mark as EUIPO’s non-use requirement claims latest victim

Just 39 250 GTOs were built between 1962 and 1964, opening the brand up to a non-use opposition at the EUIPO.

Ferrari partially loses iconic mark as EUIPO’s non-use requirement claims latest victim
<em>Sky v SkyKick</em>: permission to appeal keeps long-running trademark battle raging on
3 Jul 2020

Sky v SkyKick: permission to appeal keeps long-running trademark battle raging on

With the ramifications for partial bad-faith filings still on the table, SkyKick representatives say they are “hopeful” they will be victorious in the end.

“A victory for any brand owner that has invested to build a brand”: Booking․com and legal experts react to Supreme Court decision
1 Jul 2020

“A victory for any brand owner that has invested to build a brand”: Booking․com and legal experts react to Supreme Court decision

WTR has compiled some of the immediate responses to the SCOTUS opinion in USPTO v Bookingcom that rejected that a generic word plus ‘.com’ is automatically generic.

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10 Jul 2020

Domain name owners beware: UDRP cannot fix failure to renew

A recent case involving the domain name ‘berrysweet.com’ shows that the UDRP cannot simply be used to fix a failure to renew when all else fails, highlighting the importance of efficient portfolio management. Read more

10 Jul 2020

Blow for Marriott as court finds that cease and desist letter can trigger non-infringement suit

This decision of the Pudong New District Court in a case involving a local company and international hotel chain Marriott Worldwide Corporation has been selected as one of the top 10 IP cases of Pudong New District for 2019. Read more

9 Jul 2020

Major blow for tobacco industry as WTO Appellate Body issues decision in Australian plain packaging dispute

In a significant victory for public health, the World Trade Organisation (WTO) Appellate Body has rejected appeals lodged by the Dominican Republic and Honduras against the findings of the WTO Panel Report on Australia’s plain packaging requirements for tobacco products. Read more

9 Jul 2020

Bombay High Court considers reliefs to be granted in fake websites case

In a case involving fake websites registered by an unknown person, the Bombay High Court has considered which reliefs could be granted against domain registrars, banks and INRegistry. Read more

8 Jul 2020

Board of Appeal decision highlights difficulty of proving that mark has become generic

This decision of the Icelandic Board of Appeal emphasises the strict requirements for proving the alleged degeneration of a registered trademark under the relevant provisions of the Trademarks Act. Read more

7 Jul 2020

Bombay High Court grants ex parte relief against defendant’s use of pharma mark

In a case involving the use of identical marks for prescription-only medicines and non-prescription products, the Bombay High Court has found that there was a clear case of trademark infringement and passing off. Read more

6 Jul 2020

Taiwan courts grant broad protection to foreign trademark licensor

In cancellation proceedings against the mark DADA SUPREME, the  Taiwanese courts have imposed strict criteria for the cancellation of a trademark registration based on the improper use of the mark by a local licensee. Read more

6 Jul 2020

Green with envy? Energy Beverages fails to revoke Frucor’s mark for colour green

Under threat of trademark infringement proceedings, Energy Beverages LLC has unsuccessfully challenged Frucor Suntory’s trademark registration for the colour green in New Zealand. Read more

3 Jul 2020

Just desserts for MR. WHIPPY on appeal

This decision in UK opposition proceedings suggests that genuine use may be found where the evidence relates to a precursor of the goods covered by the specification, rather than the goods themselves. Read more

3 Jul 2020

UDRP complainant cheesed off in ‘taleggio.net’ case

A WIPO panel has denied the transfer of the domain name ‘taleggio.net’ under the UDRP because the complainant, an Italian consortium promoting and commercialising Taleggio cheese, had failed to prove that the respondent had acted in bad faith. Read more

2 Jul 2020

General Court upholds Louis Vuitton’s appeal in checkerboard pattern case

This case, which involved a beige-and-blue chequerboard pattern trademark owned by French fashion house Louis Vuitton Malletier, highlights that those hoping to obtain EUTM protection by showing acquired distinctiveness will have their work cut. Read more

1 Jul 2020

Punitive damages: a powerful weapon to protect trademark rights in China?

Following a series of decisions issued in trademark infringement cases involving brands Hey Tea and TikTok, as well as an opinion of the Supreme People's Court, many believe that punitive damages will soon be commonly awarded in infringement cases in China. Read more

30 Jun 2020

Light beer sweetener – not so sticky after all

The US Court of Appeals for the Seventh Circuit has held that Anheuser-Busch’s statements that Molson Coors’ beers were made with corn syrup were not false and misleading under the Lanham Act. Read more

29 Jun 2020

SPC denies trademark infringement in bad-faith lawsuit against Michael Kors

The Supreme People’s Court of China has confirmed the dismissal of an infringement action filed by the owner of the MK logo against clothing company Michael Kors. The fact that the plaintiff sought to benefit from Michael Kors’ reputation led to its downfall, but some of the court’s findings seem debatable. Read more

29 Jun 2020

‘casinodaddy.com’: claim fails due to insufficient evidence of bad-faith registration

A recent case involving the domain name ‘casinodaddy.com’ highlights that UDRP complaints will usually be denied if the panel feels that the issues are too complex and better suited to more in-depth consideration by a court of law. Read more

26 Jun 2020

Merck v Merck: infringements in the digital age

The High Court has brought an end - for now - to the long-running trademark dispute between Merck KGaA and Merck Sharp & Dohme. Read more

25 Jun 2020

CJEU: "incorrect in law" to assess similarity of signs in light of distinctive character

This decision of the Court of Justice of the European Union shows that the reputation and distinctive character of the mark on which an opposition is based are irrelevant to the assessment of similarity. Read more

25 Jun 2020

No special test for short marks, says the appointed person

This decision highlights that all marks, irrespective of their number of letters, are subject to the well-established principles for the assessment of the visual, aural and conceptual similarities. Read more

24 Jun 2020

General Court provides guidance on assessment of evidence of genuine use

The EU General Court has provided important guidance on the evaluation of the proof of genuine use of a mark in opposition proceedings involving clothing company Diesel and sporting equipment and apparel retailer Sprinter. Read more

23 Jun 2020

How US case law can help well-known faces protect their publicity rights

The successes and failures of previous high-profile cases offer some guidance on how those in the public eye can best protect their personal brand in the absence of explicit federal-level legislation. Read more

23 Jun 2020

Utility company’s mark refused for being confusingly similar to Swedish coat of arms

This case demonstrates the broad protection afforded to state emblems under EU and Swedish law. Read more

22 Jun 2020

General Court slices through hunting company’s appeal in TASER case

The EU General Court has confirmed that there was a likelihood of confusion between the figurative mark TASER for “side arms; penknives” in Class 8 and earlier TASER marks for “non-lethal electronic weapons” in Class 13. Read more

22 Jun 2020

UDRP may not be used as means to wrest domain names corresponding to trademarks from registrants

A UDRP panel has refused to order the transfer of the domain name ‘shaze.com’ to the owner of the SHAZE mark, finding that the latter had narrowly fallen short of proving its case on the balance of probabilities. Read more

19 Jun 2020

JUNGLE GRILL trademark application goes down in flames on appeal

A decision of the appointed person on appeal from a successful opposition to a UK trademark application highlights that additional elements in a mark may not be sufficient to avoid a likelihood of indirect confusion. Read more

19 Jun 2020

3D mark for Rubik’s Cube shape struck off register

In Extreme Toys Ltd v Seven Towns SA, the Israeli registrar of trademarks has held that the shape of the Rubik’s Cube was functional and was thus ineligible for registration as a 3D mark. Read more

18 Jun 2020

MasterCard loses round in logo cases before General Court

The General Court has found against MasterCard International Inc and annulled 12 decisions of the Second Board of Appeal of the EUIPO regarding oppositions based on the MasterCard logos. Read more

18 Jun 2020

Don’t SULKA: plaintiff must demonstrate intent and ability to use mark

This decision of the US Court of Appeals for the Second Circuit is of particular interest to companies looking to protect and enforce their trademarks in the United States when confronted with a declaratory action for abandonment by a non-US entity. Read more

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