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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UDRP respondent establishes prior registration based on unbroken chain of possession

A decision under the Uniform Domain Name Dispute Resolution Policy illustrates how a respondent may rely on an unbroken chain of ownership of a disputed domain name to establish its original registration/acquisition date.  Read more

Today

Polo logo appeal dismissed: the importance of evidence of use and registrations

The EUIPO Board of Appeal has decided that a declaration of invalidity filed by Style & Taste against Polo/Lauren’s polo logo did not contain sufficient evidence to support the claim. Read more

22 Mar 2019

General Court upholds rejection of STREAMS trademark application

In DeepMind Technologies Ltd v EUIPO, the EU General Court has confirmed that the mark STREAMS was descriptive of goods and services in Classes 9 and 42 and should be refused under Article 7(1)(c) of EU Regulation 207/2009.  Read more

21 Mar 2019

UDRP: be aware of generic terms

A recent decision under the UDRP highlights that having a trademark, by itself, does not necessarily mean that the trademark holder will succeed in obtaining the transfer of a domain name, even if it identically reproduces such trademark. Read more

21 Mar 2019

General Court: consumers perceive signs as a whole

The EU General Court has dismissed an appeal of the Fifth Board of Appeals’ decision concerning the EU mark VERA GREEN and earlier LAVERA marks. The court held that consumers generally perceive signs as a whole and do not analyse their various details. Read more

20 Mar 2019

Patent Office rejects WHEN IN ICELAND opposition

A recent Icelandic Patent Office decision serves as a useful reminder that the evaluation of similarity as set out in the Trademarks Act should always involve a nuanced comparison of the marks. Read more

19 Mar 2019

‘Funtime’ is over for Trespass

The Intellectual Property Enterprise Court has held that Luen Fat Metal & Plastic Manufactory Co Limited’s UK and EU trademarks for a series of word marks (FUNTIME, FUN TIME and FUN-TIME) are valid and have been infringed. Read more

15 Mar 2019

Chicago Mercantile Exchange v Intercontinental Exchange: exclusively descriptive names are not registrable trademarks

A recent decision of the IP Office of Singapore in invalidity proceedings illustrates that, even if a party is the sole provider of a particular product or service, it does not automatically acquire the right to register the mark covering that product or service. Read more

14 Mar 2019

Imprisonment for breaching injunctions is annulled by Constitutional Court

Turkey’s Constitutional Court has annulled the first sentence of Article 398(1) of the Code of Civil Procedure, which deals with disciplinary imprisonment for acting against a preliminary injunction. Read more

14 Mar 2019

CJEU considers trademarks with common element 'so' and finds likelihood of confusion

When is a single common element sufficient to create a likelihood of confusion? A decision of the Court of Justice of the European Union in a case involving the mark SO’BIO ĒTIC and earlier SO…? marks illustrates the difficulties in answering that question. Read more

12 Mar 2019

Russian IP Court confirms invalidation of BBC’s TOP GEAR mark

In a controversial decision, the Russian IP Court has upheld a Patent and Trademark Office decision which found the British Broadcasting Corporation’s TOP GEAR trademark to be invalid based on the existence of a senior, almost identical mark belonging to a third party. Read more

11 Mar 2019

Blow for Apple as General Court finds that one cannot compare apples with pears

In a blow to US tech giant Apple Inc, the EU General Court has annulled a decision of the EUIPO in which the latter had upheld Apple’s opposition against the registration of the figurative mark PEAR for information and communications technology-related goods and services based on its famous apple logo mark. Read more

8 Mar 2019

Victory for Tambrands Inc as third party’s attempt to register TAMPAX mark fails  

The Appeal Division of the Lithuanian State Patent Bureau has upheld an opposition filed by Tambrands Inc, the owner of the TAMPAX mark, against the registration of the mark TAMPAX by a natural person. Read more

7 Mar 2019

Chinese court rules in favour of cognac house in 3D trademark infringement case

A Chinese court has ruled in favour of Martell, the oldest of the great cognac houses, in a case involving the infringement of Martell’s 3D trademark for the shape of its Martell XO cognac bottle. Read more

6 Mar 2019

Court of Appeal considers registration on basis of honest concurrent use or special circumstances

In a somewhat surprising decision, the Zambian Court of Appeal has held that the US Polo Association was entitled to register a polo player mark in Classes 18 and 25 in the face of an earlier polo player mark in the same classes, finding that there were “special circumstances” that warranted registration. Read more

6 Mar 2019

MOULDPRO case: General Court confirms that no 'agent-principal' relationship between parties had been established  

In Mouldpro v EUIPO, the General Court has upheld a decision of the EUIPO Fourth Board of Appeal rejecting an application for a declaration of invalidity of the word mark MOULDPRO. The decision calls into question the definition of the agent-principal relationship. Read more

5 Mar 2019

Victory for tobacco companies as Criminal Court issues important precedent concerning IP rights and public health

Various tobacco companies, including Phillip Morris International, have recently obtained a significant decision in Peru for an offence related to IP rights and public health. Read more

4 Mar 2019

Cancellation actions: towards lighter evidence of use requirements

Until now, the Bolivian Patent and Trademark Office had interpreted Article 165 of Decision 486 as meaning that use of a mark had to be shown for each of the three consecutive years making up the relevant period. However, in a welcome development for mark owners, the Andean Tribunal recently reached an opposite conclusion. Read more

4 Mar 2019

Broken heart for Bayer? General Court upholds refusal to register figurative mark representing a heart

The EU General Court has confirmed that a figurative mark applied for by Bayer would be perceived by the relevant public as the representation of a heart and, therefore, as a reference to the fact that the services in question concerned the field of cardiology. Read more

1 Mar 2019

ETNIA versus ETNIK: a litany of errors

The EU General Court has upheld a EUIPO decision in opposition proceedings filed by Etnia Dreams against the registration of the mark ETNIK. The opponent had made a series of errors which led the EUIPO to find that the opposition was inadmissible.   Read more

28 Feb 2019

Delhi High Court imposes substantial punitive damages on habitual infringers

In Whatman International Limited v Mehta, the Delhi High Court has taken a stern stance against habitual infringers. The decision shows that the Indian courts are increasingly adopting a zero-tolerance policy in such cases. Read more

28 Feb 2019

"Bye Bye Bye, Bye Babybel": Sainsbury's obtains cancellation of Babybel red wax mark

Fromageries Bel, the maker of Babybel and owner of a UK trademark consisting of a three-dimensional round wax coating with the colour limited to red, has had its trademark cancelled following a successful invalidation claim filed by Sainsbury’s. Read more

26 Feb 2019

High degree of phonetic similarity sufficient to create likelihood of confusion where goods are identical or highly similar

The decision of the EU General Court in a case involving the marks DJILI and GILLY has highlighted, once again, that the phonetic similarity of the signs should be given particular importance where the goods in question are likely to be purchased orally. Read more

25 Feb 2019

UDRP complaint denied on first limb

A decision involving the domain name ‘bellaterratravel.com’ highlights that complex disputes, such as those between parties with current or past business relationships, generally fall outside of the scope of the UDRP. Read more

25 Feb 2019

Unjustified refusal to suspend opposition against ALTUS

The General Court has issued its decision in Beko v EUIPO. The judgment is important because it addresses the limits to the broad discretion of the Board of Appeal in deciding on requests for the suspension of opposition proceedings. The General Court found several manifest errors which made it necessary to annul the decision of the Board of Appeal. Read more

22 Feb 2019

HUEVON case: should the PTO be a defender of morality?

A case involving an application for the mark HUEVON (which means a ‘lazy or stupid person’) has once again called into question the criteria used by the Peruvian Trademark Office to grant or refuse trademark applications. Read more

21 Feb 2019

General Court annuls EUIPO decision refusing registration of figurative mark CHIARA FERRAGNI

In a case involving a mark consisting of the name of a famous fashion influencer, the EU General Court has highlighted that the visual aspect played a greater role in the assessment of the likelihood confusion where the goods are sold in self-service stores. Read more

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Isabella Cardozo
Head of Trademarks
Rio de Janeiro, Brazil
Daniel Law