Analysis: Case Law

Making the right choice: an A-Z of EU trademark court practice and performance

In the first of our five-part series, trademark counsel from law firms across Europe provide an overview of the performance of their countries’ EU trademark courts over the past two years.

Making the right choice: an A-Z of EU trademark court practice and performance
1 Aug 2018

Cloudy skies forecast for trademark licensees in the wake of Tempnology

In light of the recent Tempnology decision, parties and their trademark counsel must exercise more caution than ever when drafting trademark licence agreements.

9 Mar 2018

The Gleissner Oppositions: investigation reveals serial trademark filer has prevailed in disputes with major brands

​​​​​​​A major new investigation by World Trademark Review reveals entrepreneur Michael Gleissner has lost a vast majority of opposition decisions in the UK, but has scored some notable victories against well-known brands.

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21 Sep 2018

Success for Apple as General Court finds certain degree of similarity between APO and APPLE marks

In a victory for Apple Inc, the EU General Court has annulled a decision of the Fourth Board of Appeal of the EUIPO in which the latter had found that the figurative mark APO was not similar to Apple’s earlier marks. Read more

20 Sep 2018

Bad news for tourism and souvenir industry as CJEU rules that castle name can be registered as trademark

In a ruling that sits uncomfortably with its earlier decision in Windsurfing Chiemsee, the Court of Justice of the European Union has rejected the notion that the name of a famous Bavarian castle could serve as a geographic indication for the relevant goods/services.  Read more

20 Sep 2018

Tread lightly: tyre company’s use of competitor’s mould is reverse passing off

In a case involving sellers of industrial tyres, the US Court of Appeals for the Ninth Circuit has confirmed that the defendant’s use of a competitor’s tyre mould to make its own tyres created a likelihood of confusion. Read more

19 Sep 2018

Delhi High Court: defendants copied all main features of Marico’s PARACHUTE-branded product

In Marico Limited v Kumar, the Delhi High Court has restrained the defendants from infringing Marico Limited’s IP rights in its PARACHUTE-branded coconut oil. Read more

18 Sep 2018

Federal Court once again affirms that "use" of a trademark does not require bricks and mortar for non-Canadian businesses  

In Hilton Worldwide v Miller Thomson, the Federal Court of Canada has held that providing “hotel services” does not require a physical hotel in Canada to constitute “use” of a trademark in the country. Read more

17 Sep 2018

A monster left licking its wounds: Monster Energy suffers three opposition losses

Energy drink giant Monster Energy has been involved in three trademark oppositions in New Zealand so far this year, and was unsuccessful in all three. Read more

14 Sep 2018

Panasonic wins passing-off case concerning packaging and product designs

In a landmark decision, the Thai Supreme Court has held that the defendant was passing off its batteries as those of Panasonic, even though it sold its products under a different trademark. Read more

14 Sep 2018

UDRP complainants beware: panel may conduct further research

A recent decision under the UDRP highlights that complainants should carefully carry out research and consider the evidence they provide to satisfy the second and third requirements of the UDRP, as the panel may conduct further research. Read more

13 Sep 2018

Massimo Osti v Global Design: should a claim be issued in the IPEC or the High Court?  

The decision in Massimo Osti v Global Design shows that the choice of bringing a case in the Intellectual Property Enterprise Court or the High Court of England and Wales is not always within the control of the claimant. Read more

12 Sep 2018

Big ticket win for respondent in ‘ticketcompare.com’ case

A WIPO panel has denied the transfer of a precious ‘.com’ domain name consisting of a generic term under the UDRP, and made a finding of reverse domain name hijacking against the complainant. Read more

11 Sep 2018

AUTOKEY marks found to have acquired secondary meaning as badge of origin

The Irish controller for patents, designs and trademarks has found that, although two AUTOKEY marks were liable to be refused under two different sections of the Trademarks Act, the marks had acquired distinctiveness through use. Read more

11 Sep 2018

Why UDRP complainants should never overstate their case

A recent decision under the UDRP shows that it is crucial to provide the necessary evidence to support the submissions in the complaint and never to overstate one's case. Read more

10 Sep 2018

Victory for mark owners as CJEU rules that they can prevent de-branding of imported goods

In Mitsubishi Shoji Kaisha Ltd v Duma Forklifts NV, the Court of Justice of the European Union has considered the issue of de-branding and re-branding of goods imported into the European Union. Read more

10 Sep 2018

Supreme Court ends long-running debate: grace period from Association Agreement directly applicable in Ukraine

Ukraine’s Supreme Court has upheld decisions of the lower courts finding that the EU-Ukraine Association Agreement - which provides for a five-year non-use grace period, as opposed to three years under the national law - applied with direct effect. Read more

7 Sep 2018

CJEU offers valuable guidance for respondents to tenders involving trademarks

The Court of Justice of the European Union has delivered a ruling on what stage of the procurement process bidders must demonstrate compliance with the technical specifications of a tender. Read more

7 Sep 2018

Letter marks: Supreme Court provides guidance on distinctiveness

The Thai Supreme Court has held that a figurative mark consisting of the letters ‘B’, ‘F’ and ‘t’ was sufficiently distinctive to be registrable under the Trademark Act.  Read more

6 Sep 2018

Ninth Circuit reaffirms laches as an equitable defence in trademark cancellation actions

In Cosmetic Warriors v Pinkette Clothing, the US Court of Appeals for the Ninth Circuit has addressed the availability of laches in trademark infringement and cancellation actions under the Lanham Act.  Read more

6 Sep 2018

IPOS dismisses adidas opposition on lack of similarity in basic geometric shapes

The IP Office of Singapore has rejected adidas’ opposition against a device mark on multiple grounds, holding that adidas’ earlier mark had only a normal level of inherent technical distinctiveness.   Read more

5 Sep 2018

Frank Industries v Nike: IPEC takes modern approach to assessment of consumer perception

In Frank Industries Pty Ltd v Nike Retail BV, the Intellectual Property Enterprise Court in London has found that Nike had infringed Frank Industries' trademark registrations for LNDR by using the sign LDNR in an advertising campaign. Read more

5 Sep 2018

Supreme Court rules that AMERICAN UNIVERSITY trademark is inherently distinctive

In a notable decision, Korea’s Supreme Court has ruled that the mark AMERICAN UNIVERSITY was sufficiently distinctive among South Korean consumers to be registered in connection with university education services. Read more

3 Aug 2018

High Court provides guidance on admissibility of new evidence on appeal from registrar

The decision of the High Court of England and Wales in Consolidated Developments Ltd v Cooper demonstrates the relatively restrictive approach which the court takes to the admission of new evidence. Read more

3 Aug 2018

MISS EARTH case: ex parte injunction vacated as plaintiff suppressed material facts

An Indian court has vacated an ex parte injunction preventing the defendants from using the mark MISS EARTH as a title in respect of a beauty pageant. Read more

2 Aug 2018

Court of Appeal provides salutary lesson to mark owners who license their trademark portfolios

The decision of the Court of Appeal of England and Wales in Holland and Barrett v General Nutrition provides valuable guidance for mark owners who license their main brand as well as a number of sub-brands. Read more

2 Aug 2018

High Court Sony decision: are well-known marks really protected?

In a decision that "may be a shock to many", the Kenyan High Court has held that Sony Corporation had failed to prove that its SONY mark was a well-known mark in Kenya. Read more

30 Jul 2018

General Court: CAVE DE TAIN does not evoke PDO 'Cava'

In a decision that provides valuable guidance on the concept of 'evocation' of a PDO, the EU General Court has confirmed that the trademark CAVE DE TAIN, which covers wines in Class 33, was not an evocation of the PDO 'Cava'. Read more

27 Jul 2018

Louboutin: the interplay of colour and shape

Louboutin’s win before the European Court of Justice shines a light on the complexities of colour marks. Read more

27 Jul 2018

Mark owners beware: trademarks slipping through the cracks of loose corporate structures and corporate governance

Two recent decisions of the South African Supreme Court of Appeal highlight the dangers to trademark owners, from a proof of use perspective, in not setting up their corporate structures properly. Read more

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