Analysis: Case Law

What the rest of the world can learn from Latvia’s dealings with serial filer Michael Gleissner

The long read: The voracious filing activities of entrepreneur Michael Gleissner have flummoxed IP experts around the world for years. A closer look at a series of courtroom battles in one European country could help to pull back the curtain.

What the rest of the world can learn from Latvia’s dealings with serial filer Michael Gleissner
From <em>Skykick </em>to Brexit: the five EU developments every trademark expert needs to know about
18 Mar 2021

From Skykick to Brexit: the five EU developments every trademark expert needs to know about

The long read: We examine key takeaways from the biggest cases of the past 12 months and take a deep dive into what Brexit means for EU trademark owners.

A countdown of the biggest trademark lessons from US courts in 2020
11 Mar 2021

A countdown of the biggest trademark lessons from US courts in 2020

The long read: A whistlestop tour of US case law offers brand owners crucial pointers covering everything from generic.com marks to what constitutes useful trade dress.

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9 Apr 2021

RestQ sleep aid products restrained due to similarity to Rescue Sleep products

The Australian Federal Court has restrained the maker of a sleep aid product from using the name RestQ due to the similarity with an existing product for dealing with sleeplessness sold under the names Rescue and Rescue Sleep. Read more

8 Apr 2021

Attorneys’ fees: the steep price of not being exceptional

In this dispute between two hotel operators, the US Court of Appeals for the Seventh Circuit has considered the appropriate standard for determining what makes a trademark case sufficiently exceptional to warrant an award of attorneys’ fees. Read more

7 Apr 2021

General Court confirms invalidity of EUTM on ground of bad faith due to prior contractual relationship

This decision highlights the case-by-case approach of the General Court when it comes to bad-faith filings - an area which still requires some clarification. Read more

7 Apr 2021

Uh-Oh Polly - the importance of unregistered design rights in the fashion industry

Where does inspiration end, and unlawful copying begin? This was the question considered by the High Court of England and Wales in this dispute between rival companies in the bodycon and bandage garments sector. Read more

6 Apr 2021

Bombay High Court: phonetic differences between STIMULIV and STIMULET not sufficient to tell one from the other

This decision of the Bombay High Court highlights that, when pharmaceutical preparations are involved, there should not be the slightest possibility of confusion, error or mistaken identity. Read more

6 Apr 2021

Use of Toyota’s marks on car parts held not to fall within Article 157 exception

Peru's Administrative Court of Appeal has found that use of the sign USE FOR TOYOTA/LEXUS AUTOPARTS on imported oil and fuel filters did not fall within the exception provided for by Article 157 of Decision 486. Read more

1 Apr 2021

General Court considers concept behind TIME

In this dispute involving the marks THE TIME and TIMEHOUSE, the EU General Court rejected the argument that the EUIPO had erred in failing to apply the counteraction theory, under which conceptual differences may counteract visual and phonetic similarities. Read more

1 Apr 2021

UDRP complaint for ‘ecourier.com’ fails to deliver

This decision highlights some important points for prospective UDRP filers, including that they are required to provide a complete and accurate record of material evidence, which may include pre-complaint correspondence - as failure to do so may be interpreted as an attempt to mislead the panel. Read more

31 Mar 2021

Supreme Court: no additional circumstances required in the assessment of descriptive trade names

In this dispute between British cheese manufacturer Dairy Partners and Dutch dairy company DOC Dairy Partners, the Dutch Supreme Court has put an end to longstanding uncertainty concerning the protection of descriptive trade names. Read more

31 Mar 2021

Colourful non-functionality argument misses the (design) mark

In this dispute between competitors in the field of mixing tips used by dentists, the US Court of Appeals for the Second Circuit has addressed the functionality of colours in design marks. Read more

30 Mar 2021

IPEC: evidence of use is insufficient to show that a neologism is a badge of origin

This UK case involving the term ‘Cryptoback’ highlights the difficulties faced by a party seeking to rely on goodwill associated with a newly-coined word used in relation to a particular product or service. Read more

29 Mar 2021

The Kerry trademark wars: General Court confirms likelihood of confusion between KERRYGOLD and KERRYMAID - but only for non-English speakers

The EU General Court has confirmed that there was likelihood of confusion between KERRYGOLD and KERRYMAID for certain goods in Classes 29 and 30 for the large part of the relevant public who are not aware of the geographical significance of ‘kerry’. Read more

26 Mar 2021

PUMA v PUMA-SYSTEM: reputed trademarks and the significance of the proximity between the goods and services

This decision of the EU General Court highlights the importance of providing solid arguments in relation to the existence of a link between two marks - even for trademarks with an exceptional reputation. Read more

26 Mar 2021

Bad-faith registration claim defeated by UDRP panel’s research

This UDRP decision shows that, where evidence is publicly available, it is in the interests of the complainant to thoroughly explore it to identify any elements that could substantiate or invalidate its assertions. Read more

25 Mar 2021

General Court confirms likelihood of confusion between HAUZ and HOUZZ

The EU General Court has issued three decisions in parallel proceedings confirming the existence of a likelihood of confusion between HAUZ and HOUZZ for Class 20 goods, including furniture and furnishings. Read more

25 Mar 2021

Decaux v Decaux: High Court affirms legal protection of well-known marks

The Tanzanian High Court has confirmed, for the first time, that the legal protection afforded to well-known marks by far overrides the protection obtained through a mere registration under the Companies Act. Read more

24 Mar 2021

That’s so metal: Ninth Circuit confirms standard of review for finding unclean hands on summary judgment

In a dispute over the use of the mark METAL, the US Court of Appeals for the Ninth Circuit has considered for the first time the standard of review to be applied when a district court concludes that a party has acted with unclean hands. Read more

23 Mar 2021

Heartfulness creator fails to prove that mark functions as source indicator

The EU General Court has confirmed that Sahaj Marg Spirituality Foundation’s mark HEARTFULNESS - which was created by Sahaj Marg to designate a relaxation and meditation technique - was descriptive and lacked distinctiveness. Read more

23 Mar 2021

Federal Administrative Court considers similarity of foodstuff and restaurant services in ZARA case

The Swiss Federal Administrative Court has refused to find a similarity between pasta products and catering services, holding that this would over-stretch the specialty principle. Read more

22 Mar 2021

WIPO panel: no cybersquatting, no jurisdiction

This case, in which the complainant claimed that a domain name had been stolen from him, is a reminder of the purpose - as well as the limits - of the UDRP. Read more

19 Mar 2021

RE:PLAY decision: appointed person confirms that appeal is not a replay of opposition

This decision of the appointed person on appeal from the UKIPO highlights that parties should ensure that they file sufficient evidence in support of their assertions at first instance. Read more

19 Mar 2021

Recent IP Court decisions highlight registrability issues for trademarks including numbers

Taiwan’s IP Court has recently issued two decisions involving Volkswagen’s mark ID.4 and Taipei Financial Center Corporation’s mark 101 - with very different outcomes. Read more

18 Mar 2021

In the wrong gear: General Court recalls basic principles of likelihood of confusion assessment in VROOM case

The EU General Court has confirmed that there was a likelihood of confusion between the Bezos Family Foundation’s mark VROOM and the earlier mark POP & VROOM, owned by an affiliate of the French state-owned railway company. Read more

18 Mar 2021

Precautionary measures issued based on trade dress of BaByliss hair straightening iron

The Peruvian Trademark Office has recognised that the grey-blue colour and the font used for the word element ‘Nano Titanium’ are part of the trade dress of BaByliss’ Nano Titanium hair straightening iron. Read more

17 Mar 2021

Fight fire with fire: Cormeton Fire Protection turns to IPEC in co-branding dispute

This case involving two companies which, at one stage, were closely linked with a shared majority owner demonstrates the Intellectual Property Enterprise Court’s ability to deal with complex disputes. Read more

17 Mar 2021

Second Circuit: agreement to one is not consent to all

In a case involving the unauthorised use of professional models’ photographs in promotional materials for gentlemen’s clubs, the US Court of Appeals for the Second Circuit has held that the district court had erred in its interpretation of “consent”. Read more

16 Mar 2021

Registration of HILDA device mark limited due to conflict with well-known BARILLA mark

In mixed news for Italian pasta manufacturer Barilla, the Israel Trademark Office has found that the stylised mark HILDA was confusingly similar to the well-known BARILLA mark, but only if used in the same red-and-white colour combination. Read more

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Janet F Satterthwaite
Chair, Trademark Practice
Washington DC, United States
Potomac Law Group PLLC