Analysis: Case Law

US Supreme Court urged to rule on treatment of parody after Jack Daniel’s petition

If the court grants certiorari, it will once again be weighing in on a case that reconsiders how free speech interplays with commercial trademark rights.

US Supreme Court urged to rule on treatment of parody after Jack Daniel’s petition
Legal experts react to appeal court’s $21 million damages decision in <em>Tiffany v Costco</em>
19 Aug 2020

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.

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.

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Today

Are mobile phones really little computers?

In opposition proceedings against LG Electronics Inc's application for K7, the EU General Court has confirmed that "smart phones", "mobile phones" and "wearable smart phones" are similar to "computers". Read more

Today

Appeal ends on a high note for X Factor's James Arthur

This decision of the appointed person, on appeal from a decision of the UKIPO, highlights that trademark owners should ensure that they have made a real effort to create or maintain a share in the relevant market. Read more

30 Nov 2020

Deutsche Post defeated in opposition against ‘post horn’ mark

Deutsche Post is well known for asserting its trademark rights against competitors. In the present case, however, it was unsuccessful in its attempt to oppose the registration of a mark consisting of a stylised horn on a yellow background by Pošta Slovenije. Read more

30 Nov 2020

Kraft Heinz left holding an empty peanut butter jar with no label (or lid)

The long-running battle between food giant Kraft Heinz and Australian company Bega Cheese over packaging for their peanut butters has come to an end, with Australia’s highest court throwing out Kraft’s bid to appeal an earlier ruling allowing Bega to continue using its distinctive trade dress. Read more

27 Nov 2020

Different panellists, different views: why selecting a three-member panel may be advisable in borderline cases

UDRP panels can have radically different approaches to the same facts, and the selection of a three-member panel may be preferable in borderline cases. Read more

27 Nov 2020

If it looks like a whisky, then it must be a whisky

This judgment of the Supreme Court of Appeal of South Africa should reassure traders in the alcoholic beverages market of the strong protection afforded to them in instances of flagrant unlawful competition. Read more

26 Nov 2020

LOTTO v LOTTOLAND: General Court considers conditions for application of Article 8(5)

The General Court has confirmed that, notwithstanding the high reputation of the LOTTO marks and the above-average degree of similarity between LOTTO and LOTTOLAND, the existence of a link between the marks could be ruled out. Read more

26 Nov 2020

No statutory power to allow partial oppositions under Trademarks Act

In a dispute between two jewellery companies, the IP adjudicator at the Intellectual Property Office of Singapore has held that there is no statutory power to grant partial oppositions and that the opportunity to amend an application is strictly confined to the examination stage. Read more

25 Nov 2020

Rhymes but not a crime: BOTOX v PROTOX

In a blow to pharmaceutical company Allergan, the Federal Court of Australia has concluded that the use of PROTOX and BOTOX in composite phrases for skincare products did not infringe Allergan's prior BOTOX marks. Read more

24 Nov 2020

CJEU gives first ruling on Article 8(3) of Regulation 2017/1001

This decision of the Court of Justice of the European Union should provide some comfort to trademark owners as to the extent of protection of their marks when faced with misuse and unconsented EUTM applications by an agent/representative. Read more

23 Nov 2020

Sticky situation? Circumstantial evidence can support intent to confuse in trade dress claims

This decision of the US Court of Appeals for the 11th Circuit shows that a party seeking to protect its trade dress should try to show not just intentional copying, but intentional copying with the intent to confuse consumers about a product’s origins. Read more

23 Nov 2020

Appeal court finds no likelihood of confusion between TREK and OUTTREK

This decision of the Danish Eastern High Court underlines the importance of determining the relevant public correctly. Read more

20 Nov 2020

UMBRA SHEER held to be descriptive for Class 3 goods

This decision of the Swiss Federal Administrative Court highlights that English is commonly understood in Switzerland and that only lesser-used words will be deemed not to be known by the public. Read more

19 Nov 2020

WICKED v WICKED SISTER: Federal Court considers issues of deceptive similarity, ownership and removal

There was no sweet victory before the Federal Court of Australia for the owners of the WICKED SISTER mark, used mostly for dairy desserts, in their attempt to prevent use of the WICKED mark for dipping sauces and related products. Read more

19 Nov 2020

‘Back-up’ application filed to circumvent use requirement deemed to have been made in bad faith

This decision is significant in that it reveals the attitude of the Turkish Patent and Trademark Office towards ‘back-up’ trademark applications. Read more

18 Nov 2020

TARGET VENTURES case: Board of Appeal erred in finding that application was not filed in bad faith

In a decision that provides a useful review of the criteria for assessing whether an application has been filed in bad faith, the General Court has annulled a decision of the EUIPO rejecting an application for a declaration of invalidity of the mark TARGET VENTURES. Read more

18 Nov 2020

Likelihood of confusion: the business field of the parties is key

Over the past few years, Argentina’s courts have developed a new practice for the assessment of the likelihood of confusion between two trademarks registered in the same class, as demonstrated by the recent decision in Assa Abloy AB v Alvarez. Read more

17 Nov 2020

Times Now secures injunction against use of NEWSHOUR mark by ex-employee’s TV channel

The Delhi High Court granted Times Now’s request for an interim order restraining rival network Republic TV from using the mark NEWSHOUR, but did not interfere with Republic TV’s use of a mark coined by a former Times Now employee. Read more

16 Nov 2020

Good news for Ferrari as CJEU rules that use of mark for second-hand car sales may be sufficient to constitute genuine use

In a decision that will be welcomed by trademark owners, the Court of Justice of the European Union has held that use of Ferrari’s TESTAROSSA mark for spare parts and second-hand vehicles may be sufficient to constitute genuine use of the mark. Read more

16 Nov 2020

SPROUTS v SPROUT: trademark cancellation is appropriate sanction for misconduct

The US Court of Appeals for the Federal Circuit has affirmed the TTAB’s express authority to impose the cancellation of a trademark by default judgment as a sanction in a TTAB proceeding. Read more

13 Nov 2020

NAPAPIJRI position mark protected by Brussels court

VF International, the owner of the NAPAPIJRI position mark for premium winter jackets, has prevailed in a dispute over the use of the figurative mark NORTH VALLEY in a similar position on winter jackets. Read more

13 Nov 2020

Mrs Jello obtains RDNH finding in ‘spase.com’ case

This case illustrates that UDRP complainants must convincingly establish a respondent's lack of legitimate rights or interests and bad faith, especially when the domain name registration substantially pre-dates the complainant’s supposed trademark rights. Read more

12 Nov 2020

FRIGIDAIRE: General Court casts a chill on the notion of genuine use

This decision of the EU General Court in an action for the revocation of Electrolux’s mark FRIGIDAIRE is a further reminder of the difficulty of quantifying and assessing the nature of genuine use. Read more

11 Nov 2020

Nike victorious in long-running criminal trial against counterfeiters

This decision of the Peruvian Criminal Court may provide a precedent for the acceptance of technical reports and affidavits filed by the aggrieved parties’ ex parte experts in future trials. Read more

10 Nov 2020

Film titles - trademarks or not trademarks?

The recent decision of the Australian Trademarks Office in a case involving a film called Lion again discusses the issue of whether a film title may function as a trademark. Read more

9 Nov 2020

Defeat for Apple as Borgarting Appellate Court confirms cancellation of SHERLOCK mark

This decision of the Borgarting Appellate Court illustrates that not every type of commercial use will be sufficient to meet the use requirement in Norway. Read more

6 Nov 2020

General Court confirms lack of likelihood of confusion between DECATHLON and ATHLON

This decision of the EU General Court shows that, where two trademarks have a weakly distinctive element in common, the impact of such similarity on the global assessment of the likelihood of confusion will be low. Read more

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Joan Kupersmith Larkin
Partner
Los Angeles CA, United States
Seyfarth Shaw LLP