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Analysis: Case Law

Parody law in Canada: experts split over need to amend trademark rules

A Quebec court’s ruling in a high-profile parody case has reignited discussion about the treatment of satire in Canadian trademark law. We speak to two market experts, who consider whether more legal clarity is required.

Parody law in Canada: experts split over need to amend trademark rules
22 May 2019

“It’s going to make my life much better” – industry experts welcome SCOTUS licensing decision

The Supreme Court of the United States (SCOTUS) has ruled 8-1 in Mission Product Holdings v Tempnology LLC, with one legal expert telling WTR that the ruling helps to create a more stable trademark licensing market.

18 Oct 2018

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.

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19 Jul 2019

“Juul be sorry”: failure to assign domain name results in contempt of court

The decision of the High Court of England and Wales in Juul Labs Inc v Quickjuul Ltd provides a rare example of a civil court imposing penal sanctions for contempt of court. Read more

18 Jul 2019

New regulations on brands that evoke Italy or are linked to Italian territory

The so-called ‘Growth Decree’, which aims to encourage economic growth, contains certain provisions relating to IP rights. In particular, it regulates the adoption of distinctive signs that evoke Italy and, more generally, of trademarks linked to the Italian territory. Read more

18 Jul 2019

Post-verdict motion for increased damages ends on a sour note

In Barrington Music Products Inc v Music & Arts Center, the US Court of Appeals for the Seventh Circuit has held that the mark owner was not entitled to an increased damages award after discovering that two of the defendants were not separate companies. Read more

17 Jul 2019

Crunch time for Kellogg’s Nutri-Grain cereal

Multinational food and drink giant Nestlé has successfully opposed the registration in New Zealand for the 3D shape of Kellogg’s Nutri-Grain cereal. Read more

16 Jul 2019

Criminal sentence imposed for commercialisation of infringing souvenirs

The Criminal Court No 15 of Valencia has sentenced the managers of a company in the souvenir industry for committing a crime against IP rights under with Article 273 of the Criminal Code. Read more

16 Jul 2019

Court of Appeal partially overturns High Court in advertising passing-off case

A recent decision of the Court of Appeal of England and Wales highlights that the One in a Million case does not provide a remedy against cybersquatting per se: claimants must still demonstrate goodwill or reputation in the mark contained in the domain name. Read more

15 Jul 2019

Privacy problems: brand owners should use caution when using privacy service to register domain name

A recent UDRP decision involving the domain name ‘absainsurance.com’ underlines the fact that brand owners should avoid using a privacy service to register domain names unless there are sound business reasons for doing so. Read more

15 Jul 2019

General Court: iconic Gibson V-shaped guitar body invalid as 3D mark

In Gibson Brands Inc v EUIPO, the EU General Court has confirmed the partial declaration of invalidity of a three-dimensional sign representing Gibson’s iconic V-shaped electric guitar body. Read more

12 Jul 2019

FWD VIEW mark sent back to hearing officer

A recent decision of the appointed person serves as a reminder that, while there is a desire for procedural economy in trademark proceedings, taking such measures, if not done correctly, can cause significant delays.   Read more

11 Jul 2019

Changes to Thailand's trademark registration practices - what mark owners need to know

Minor and sometimes undisclosed changes in the practice of Thailand's Trademark Office have recently been revealed. These changes should be closely monitored as they can have a substantial effect on applicants and the trademark registration process generally. Read more

11 Jul 2019

BRIONI case: qualitative circumstances must be considered to determine whether registration was acquired by “other illegitimate means” under Article 44.1

In a case involving Italian menswear brand Brioni, China’s Trademark Review and Adjudication Board has held the determination of whether a registration has been acquired by "other illegitimate means" must be based on both qualitative and quantitative considerations. Read more

10 Jul 2019

Highest court ends judicial dispute involving Saône-et-Loire department

The Cour de Cassation – the highest French court – has confirmed the Versailles Court of Appeal decision ordering the transfer of three domain names infringing the trademark of the French department of Saône-et-Loire.   Read more

10 Jul 2019

Petition against use of ‘Bharat’ in Bollywood film title dismissed

The Delhi High Court has dismissed a writ petition seeking a stay on the release of Bollywood film Bharat under the Emblems and Names (Prevention of Improper Use) Act. Read more

9 Jul 2019

Appeal court confirms cancellation of TOPPÍS mark in long-running ice-cream war

A ruling from the First Appeal Court of Iceland cancelling the trademark TOPPÍS brings to an end a years-long dispute between two manufacturers of ice cream. Read more

9 Jul 2019

adidas decision: General Court reiterates importance of evidence in trademark disputes

In adidas AG v EUIPO, the EU General Court has confirmed that adidas’ three-stripe mark was invalid as a result of its lack of distinctiveness, whether inherent or acquired through use. Read more

8 Jul 2019

Exception to exhaustion of trademark rights principle enforceable for non-luxury marks

The Barcelona Court of Appeal has revoked a first-instance judgment which had dismissed the claims filed by the owner and licensee of the MUSTELA mark against its former distributor and various other companies. Read more

8 Jul 2019

No go for GO-KIDZ mark

The appointed person has upheld a UKIPO decision finding that there was a likelihood of confusion between GO-KIDZ in Classes 3, 5, 10 and 21 and earlier GO marks in Classes 5 and 21. Read more

5 Jul 2019

Victory for AC Milan as Marriott’s opposition against AC MILAN mark fails

The EU General Court has confirmed that there was no likelihood of confusion between AC Milan’s figurative mark AC MILAN in Class 43 and earlier marks containing the element ‘AC’ owned by hotel chain Marriott. Read more

4 Jul 2019

Infringer need not have “affixed” the mark to goods to be found liable

Applying generally accepted principles of trademark law, the US Court of Appeals for the Federal Circuit has found that using a competitor’s trademarks in marketing materials to promote competing products constitutes trademark infringement. Read more

4 Jul 2019

Mars successfully opposes Cadbury’s application for FINGERS in respect of chocolate, confectionery and biscuits

The Irish controller of patents, designs and trademarks has upheld that Mars’ opposition against Cadbury’s application for the registration of the mark FINGERS for chocolate, confectionery and biscuits in Class 30. Read more

3 Jul 2019

Speculating in intrinsically valuable domain names represents a legitimate business interest in itself

In a recent decision under the UDRP, a three-member panel has refused to transfer the domain name ‘incanto.com’ to Incanto Fashion Group and entered a finding of reverse domain name hijacking. Read more

3 Jul 2019

Trademark use control requirements in a corporate group eased by recent Full Federal Court decision

In Trident Seafoods Corporation v Trident Foods Pty Ltd, the Full Federal Court of Australia has provided useful guidance on the control of trademark use in a corporate group to ensure the maintenance of registered trademark validity. Read more

2 Jul 2019

Bombay High Court: one cannot contend that a word is generic and seek registration of a mark where that word is dominant

In Royal Dryfruit Range v Royal Suvidha, the Bombay High Court has ruled in favour of plaintiff Royal Dryfruit Range and restrained defendant Royal Suvidha from using the trademark/trade name ROYAL SUVIDHA in respect of dry fruits. Read more

2 Jul 2019

CJEU adds pressure on disclaimers for descriptive trademark elements following further harmonisation

Following a request for a preliminary ruling on the interpretation of Article 4(1)(b) of Directive 2008/95, the Court of Justice of the European Union has considered the effects of a disclaimer on the extent of protection of an earlier mark. Read more

1 Jul 2019

US Supreme Court rejects Lanham Act’s bar to registering FUCT mark as “immoral or scandalous”

In Iancu v Brunetti, the US Supreme Court has declared unconstitutional the Lanham Act’s bar to registering marks that are “immoral or scandalous”, allowing the FUCT trademark application to proceed to registration.  Read more

28 Jun 2019

“Hit the road, Jac”, says the appointed person

In a blow to multinational hospitality company Marriott Worldwide Corporation, the appointed person has confirmed that there was no likelihood of confusion between JACHOTELS and Marriott’s earlier marks AC HOTELS and AC HOTEL. Read more

27 Jun 2019

General Court: Board of Appeal erred in finding low degree of phonetic similarity between SUIMOX and ZYMOX  

In Pet King Brands Inc v EUIPO, the EU General Court has annulled in part a decision of the EUIPO in opposition proceedings involving the marks SUIMOX and ZYMOX in Class 5. Read more

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Trending

1

FWD VIEW mark sent back to hearing officer

2

Changes to Thailand's trademark registration practices - what mark owners need to know

3

Petition against use of ‘Bharat’ in Bollywood film title dismissed

4

BRIONI case: qualitative circumstances must be considered to determine whether registration was acquired by “other illegitimate means” under Article 44.1

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Appeal court confirms cancellation of TOPPÍS mark in long-running ice-cream war

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James H Donoian
Partner
New York NY, United States
McCarter & English LLP
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