Analysis: Case Law

Legal experts react to appeal court’s $21 million damages decision in Tiffany v Costco

The decision highlights the importance of controlling a trademark’s use in the marketplace. WTR spoke to legal experts for brand takeaways.

Legal experts react to appeal court’s $21 million damages decision in <em>Tiffany v Costco</em>
Ferrari partially loses iconic mark as EUIPO’s non-use requirement claims latest victim
9 Jul 2020

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.

<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.

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25 Sep 2020

GATORADE: first trademark to be recognised as notorious in Dominican Republic

Based on a large amount of evidence submitted by Stokely-Van Camp Inc, the Distinctive Signs Department of ONAPI has declared that the trademark GATORADE was notorious for sports beverages and water consumed during sports activities in Class 32. Read more

25 Sep 2020

Owner of THERMACOTE mark fails to prevent registration of DULUX TRADE TERMACOAT+

Therma-Cote Inc, the owner of the EUTM THERMACOTE for paints and varnishes, has been unsuccessful in its attempt to oppose the registration of DULUX TRADE TERMACOAT+ for identical or similar goods. Read more

24 Sep 2020

‘Sea of reptiles’ found to infringe Lacoste’s crocodile mark

Lacoste’s success on appeal in this case demonstrates the importance of market surveys to show a likelihood of confusion. Read more

23 Sep 2020

Puma's quest to block Nike's FOOTWARE mark is de-feeted

In a somewhat surprising decision, the UKIPO has rejected Puma SE’s opposition against Nike Innovate CV's application to register the word mark FOOTWARE for various goods and services, including wearable technology. Read more

23 Sep 2020

No glow for complainant in ‘shopgloworganics.com’ case

The complainant in this case interpreted Paragraph 2 of the UDRP as an ongoing warranty that a domain name would not be used in bad faith, but the panel was not prepared to support this interpretation. Read more

22 Sep 2020

Legitimacy of Turkish PTO’s registry of well-known trademarks thrown into doubt

Following a decision of the Turkish Court of Appeals earlier this year, the future of the registry of well-known trademarks, which is managed by the Patent and Trademark Office, is hanging in the balance. Read more

22 Sep 2020

MONABANQ SA fails to prevent registration of MANO.BANK by Lithuanian bank

French-established bank MONABANQ SA has been unsuccessful in its attempt to oppose the registration of the figurative trademark MANO.BANK by AB “Mano bankas”, a Lithuanian specialised bank. Read more

21 Sep 2020

Achtung! German applicant fails to defend its trademark before the CJEU

In a blow to German advertising agency achtung! GmbH, the Court of Justice of the European Union has confirmed that the figurative mark ACHTUNG! would be perceived by the relevant consumers as a promotional advertising message. Read more

21 Sep 2020

Trademark “services” online finally defined by Federal Court of Appeal

The Canadian Federal Court of Appeal’s long-awaited decision on what constitutes trademark “use” in association with services in the internet age has finally been released. Read more

18 Sep 2020

Blow for Valentino SpA as opposition against VALENTINO RUDY mark is dismissed

Italian fashion company Valentino SpA’s opposition against the registration of a figurative mark consisting of a ‘V’ device element and the word element 'Valentino Rudy' in Singapore has failed on all grounds. Read more

17 Sep 2020

No success for Glaxo in protecting purple colour mark

The threshold to demonstrate acquired distinctiveness is extremely high for colour marks; compounded by the many pitfalls intrinsic in survey evidence, meeting such threshold now seems near impossible in practice, even for the most well-known brands. Read more

17 Sep 2020

Higher Court allows prior use defence in EUTM infringement proceedings

This decision of the Higher Court of Slovenia in a dispute involving the Skenderbeu brandy is significant in that it establishes that the prior use defence can be used against EUTMs, and not only national trademarks. Read more

16 Sep 2020

Shoot for the moon (boots) and if you miss, you’ll land… with a non-distinctive mark

In a blow to Tecnica Group SpA, the manufacturer of the popular ‘moon boots’, the First Board of Appeal of the EUIPO has confirmed that Tecnica’s 3D mark for the shape of its boots lacked distinctiveness. Read more

16 Sep 2020

UDRP: coincidental similarity is not typosquatting

This case involving the domain name ‘trueworths.com’ and the trademark TRUWORTHS demonstrates that obtaining a transfer under the UDRP is perhaps not as easy as it may seem in certain more complex scenarios. Read more

15 Sep 2020

Interflora loses Google Ads case

The Danish Maritime and Commercial High Court has dealt a blow to flower delivery network Interflora, finding that competitor Abella Blomster did not use ‘interflora’ as a keyword in Google Ads. Read more

15 Sep 2020

Limitation of product description in trademark registration following non-use cancellation action

Colombia’s Trademark Office has recently clarified the interpretation of Article 165 of Andean Community Decision 486 concerning the coverage of a trademark registration following a cancellation action on the ground of non-use. Read more

11 Sep 2020

Supreme Administrative Court: goods in Class 25 and services in Class 41 may be complementary

This decision of the Supreme Administrative Court of Finland in a case involving the mark NFC FIGHT NIGHT in Class 25 and the earlier mark UFC FIGHT NIGHT in Class 41 may lead to an increased number of oppositions claiming that goods and services are complementary. Read more

10 Sep 2020

WELMAX case: time limits before the EUIPO and how to calculate them

This decision of the EU General Court considers several interesting procedural issues, such as the time limit for an appeal before the Board of Appeal of the EUIPO and the point from which that time limit starts to run. Read more

10 Sep 2020

UDRP complaint fails by "a large margin"

This case, which involved the domain name ‘gen.com’, presents a number of key points for complainants considering filing a UDRP complaint - including the importance of a frank and objective appraisal of the strength of one's case at the outset. Read more

9 Sep 2020

Crocs Inc victorious on appeal in oppositions against 3D marks in Class 25

In a victory for US footwear company Crocs Inc, the Administrative Court of Appeals of INDECOPI in Peru has rejected Industrias Humarsa EIRL’s applications for the registration of 3D trademarks for shoes. Read more

8 Sep 2020

Battle of the sawmills: court issues decision in LUMBER case

Canadian company Norwood Industries Inc has suffered a double blow in its dispute with Swedish competitor JM:s Plåt & Mek AB over marks containing the prefix ‘lumber’. Read more

8 Sep 2020

Diamonds to dust? Too many factual disputes preclude summary judgment in Tiffany v Costco

The US Court of Appeals for the Second Circuit has vacated a district court’s summary judgment grant in favour of Tiffany because factual disputes existed around whether Costco’s use of the word ‘Tiffany’ was merely descriptive of a particular ring setting. Read more

7 Sep 2020

Republic of Panama successfully defends itself against international arbitration claim filed by Bridgestone

The Tribunal of the International Centre for Settlement of Investment Disputes has dismissed a $20 million claim filed by Bridgestone Licensing Services Inc and Bridgestone Americas Inc against the Republic of Panama. Read more

7 Sep 2020

BLACK SHEEP trademark dispute - not all sheep are the same

This Australian decision provides guidance on what types of evidence may - or may not - be sufficient to prove use of a trademark in the course of trade. Read more

3 Sep 2020

Novartis obtains cancellation of GSK’s trademark on ground of non-use

In a victory for multinational pharmaceutical company Novartis AG, the Colombian Trademark Office has ordered the cancellation of a trademark owned by GlaxoSmithKline, finding that it had not been used in the relevant class. Read more

1 Sep 2020

The protection of unregistered well-known marks by the EU courts under Article 6bis of the Paris Convention

This decision of the EU General Court in invalidity proceedings gives a useful overview of the differences between the scope of protection of unregistered well-known trademarks on the one hand, and registered well-known trademarks on the other. Read more

1 Sep 2020

ACTAZIN v ACTIPHEN: a tale of two cities or in the ear of the beholder

The Court of Appeal of New Zealand has confirmed that concurrent use of the marks ACTAZIN and ACTIPHEN was likely to cause confusion. In contrast, the Australian Trademarks Office had found that the marks were not deceptively similar. Read more

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