Analysis: Case Law

Can anonymous internet comments be used as evidence in trademark litigation?

While the role of anonymous confusion is still somewhat muddied by inconsistent approaches, parties should be prepared to handle concerns as to relevance, hearsay and authentication.

Can anonymous internet comments be used as evidence in trademark litigation?
2 Oct 2018

Attack on the senses: a comparison of non-traditional marks

Practitioners need to be aware of the differences between obtaining protection for smell, taste and texture marks in the European Union and the United States.

1 Oct 2018

Moving and shaking: securing protection for shapes and movement marks

With non-traditional trademark registrations on the rise, a nuanced understanding of the differences between obtaining protection in the European Union and the United States is crucial.

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Today

Leading hotel management company prevails in opposition proceedings against CAFE FOUR SEASONS

Four Seasons Hotels (Barbados) Ltd has been successful in opposition proceedings against the Lithuanian figurative trademark CAFE FOUR SEASONS for food and drink services in Class 43. Read more

Today

General Court: black-and-white registration certificate does not satisfy requirements for representation of earlier figurative mark   

In opposition proceedings between Aldi Einkauf and Aldo Supermarkets, the EU General Court has held that submitting a copy of a national registration certificate in black and white did not satisfy the conditions governing the representation of the earlier mark. Read more

14 Nov 2018

General Court: disclosure of earlier design cannot be proved by means of probabilities or suppositions

The decision of the EU General Court in Mamas and Papas Ltd v EUIPO, which concerned a registered Community design representing a cot bumper, shows that the parties should present their best evidence in proceedings not only before the court, but also before the EUIPO. Read more

13 Nov 2018

UDRP proceedings: non-response does not mean transfer

A UDRP panel has refused to order the transfer of a domain name that partly incorporated the complainant's mark because the complainant failed to prove that the respondent had registered or used the domain name in bad faith - even though the latter did not respond. Read more

13 Nov 2018

Victory for Volvo as Patent and Market Court takes a stance on bad-faith applications

A recent case involving the registration by Green Stapler of the name of Volvo's "Made by Sweden" campaign shows how the Swedish Patent and Market Court will assess whether an applicant has acted in bad faith. Read more

12 Nov 2018

General Court: name of spa town eligible for registration for mineral waters

The EU General Court has annulled a decision of the EUIPO in which the latter had found that the mark DEVIN - the name of a Bulgarian spa town - for mineral waters was descriptive of the geographical origin of the goods. Read more

9 Nov 2018

Rights holders beware: criminal raid action deemed to be act of unfair competition

In a ground-breaking decision, the Turkish Court of Appeals has held that a criminal raid action constituted an act of unfair competition and that the complainant should pay compensation to the defendant for damages incurred due to the raid. Read more

8 Nov 2018

CJEU confirms that categorisation as "colour mark" at time of filing is relevant when assessing validity

The Court of Justice of the European Union has confirmed that the categorisation of a mark as a “colour mark” at the point of filing is relevant when assessing its validity. Read more

8 Nov 2018

TTAB dismisses NEW MAN cancellation petitions, finding no abandonment despite six years of non-use

The US Trademark Trial and Appeal Board has dismissed petitions for the cancellation of four NEW MAN marks for clothing, even though Newman only put the marks into use six years after acquiring them, and then only on a minimal basis. Read more

7 Nov 2018

Hasbro retains MONOPOLY trademark

The registrar of the UK Intellectual Property Office has dismissed an application to revoke Hasbro’s trademark registration for MONOPOLY on the ground that the mark had not been put to genuine use. Read more

6 Nov 2018

Well-known healer’s name and alias protected to the benefit of his heirs

The Board of Appeal of Estonia has upheld oppositions filed by the heirs of well-known healer and writer Aleksander Heintalu (also known as Vigala Sass) against the registration of ALEKSANDER HEINTALU and VIGALA SASS. Read more

6 Nov 2018

Who is allowed to promote a MINI coffee machine and MINI XL coffee mugs?

Car manufacturer BMW has successfully challenged coffee retailer Tchibo’s use of ‘MINI’ for coffee machines and coffee mugs before the Frankfurt District Court. Read more

5 Nov 2018

 "Close call" involving recurrent online sales triggers minimum contacts, specific jurisdiction

The US Court of Appeals for the First Circuit has confirmed that a foreign company subjected itself to specific personal jurisdiction in a trademark dispute where that company had sizeable continued online sales to US customers. Read more

2 Nov 2018

Bacardi’s application for 42 BELOW sunk by non-registered national trademark

The EU General Court has confirmed that there was a likelihood of confusion between Bacardi’s mark 42 BELOW for alcoholic beverages and the earlier non-registered mark VODKA 42 used in the Czech Republic and Slovakia for the same goods. Read more

1 Nov 2018

DETROIT ATHLETIC CO.: not even a sporting chance for registration

The US Court of Appeals for the Federal Circuit has affirmed a TTAB decision sustaining the refusal to register the mark DETROIT ATHLETIC CO. based on a likelihood of confusion with the earlier mark DETROIT ATHLETIC CLUB. Read more

31 Oct 2018

Meitu afforded well-known trademark protection despite registering loss in association with core mark

China’s Supreme People’s Court has confirmed that the core mark of technology company Meitu should be recognised as well known. The case shows that the nature of the relevant industry may affect the determination of whether a mark is well known. Read more

31 Oct 2018

Settlement privilege and domain name arbitrations: the case of ‘potterybarnbaby.ca’

A recent decision under Canada’s Domain Name Dispute Resolution Policy shows that deeming correspondence “without prejudice” may impact a complainant’s ability to prove the registrant’s bad faith and could ultimately decide the outcome of the dispute. Read more

30 Oct 2018

GOLDEN BALLS v BALLON D’OR: the golden rules of the assessment of reputation

In the long-running dispute over the marks GOLDEN BALLS and BALLON D’OR, the EU General Court has clarified the parameters for the assessment of reputation in the context of the appreciation of the risk of confusion. Read more

30 Oct 2018

Battle over TRIDENT trademark in Australia continues

In Trident Seafoods v Trident Foods, the Federal Court of Australia has allowed Trident Foods to retain its registrations for TRIDENT in Class 29, despite the mark not having been used in relation to Class 29 goods during the relevant period. Read more

29 Oct 2018

General Court puts brakes on Fiat Chrysler Automobiles’ VIPER trademark registration

The EU General Court has dismissed an appeal by Fiat Chrysler Automobiles against the partial invalidation of its EU trademark VIPER for automobiles and vehicles. Read more

29 Oct 2018

Federal Court: official marks not an absolute defence to infringement in Canada

In Quality Program Services Inc v Canada, the Federal Court of Canada has held that official marks do not insulate their holders from claims by third parties.   Read more

26 Oct 2018

Defending the appellation of origin 'pisco' in the world: the Margaret River Winemakers case

Recently, the Peruvian appellation of origin 'pisco' had to be defended in Australia following an application for registration of this denomination by Australian company Margaret River Winemakers.  Read more

26 Oct 2018

Diesel fumes: latest instalment in long-running proceedings between Diesel SpA and Montex Holdings Limited

In the most recent judgment in the long-running dispute between Italian fashion label Diesel and Irish clothing company Montex, the Court of Appeal has confirmed a strict test for admitting new evidence on appeal in trademark cases. Read more

25 Oct 2018

Hope for Microsoft: opponent which filed new application for unused mark found to have acted in bad faith

In a dispute between Microsoft and a prominent grocery business in Turkey, the Turkish Re-examination and Evaluation Board has found that the grocery business had acted in bad faith by filing a new application for an unused mark. Read more

25 Oct 2018

General Court clarifies that marks must be identical for Article 8(3) to apply

In John Mills Ltd v EUIPO, the EU General Court has ruled that Article 8(3) of Regulation 207/2009, which aims to prevent the misuse of a mark by the trademark proprietor’s agent, applies only if the marks are identical.     Read more

24 Oct 2018

PINK LADY versus WILD PINK: it ain’t over till the pink lady sings

In Apple and Pear Australia Ltd v EUIPO, the EU General Court has annulled a decision that had previously gone in favour of Pink Lady America in its trademark dispute with other fruit organisations in the European Union. Read more

23 Oct 2018

Red Bull gives you wings, but loses against FLÜGEL

In a blow to energy drinks giant Red Bull, the EU General Court has annulled a EUIPO decision declaring that the mark FLÜGEL was invalid for “alcoholic beverages” due to a likelihood of confusion with Red Bull’s earlier VERLEIHT FLÜGEL marks for “energy drinks”. Read more

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