Analysis: Case Law

“UK will become paradise for free riders”: CJEU referral highlights potential Brexit IP schism

Four questions have been referred to the CJEU which could lead to a landmark judgement on a trademark owners’ rights to stop resales. The decision may further enlarge the gulf between the UK and the EU's position on exhaustion post-Brexit.

“UK will become paradise for free riders”: CJEU referral highlights potential Brexit IP schism
16 Jan 2020

How the amicus briefs could sway the US Supreme Court in anticipated ‘booking.com’ ruling

Three amicus curiae briefs have been delivered to the US Supreme Court ahead of its long-anticipated ruling in USPTO v Booking.com. WTR spoke to two experts to see how these briefs may influence the United States' highest court.

6 Dec 2019

Fleet Feet’s court victory against Nike highlights challenges in using and protecting slogan marks

A ruling centred on Nike’s use of the ‘Sport Changes Everything’ slogan highlights the conundrum over when and where to seek registered protection for slogans, and the different approaches adopted by IP offices to ad campaign slogans.

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No free ticket for toys at the border: BMW successfully defends itself against lawsuit by toy manufacturer

Well-known car manufacturer BMW has successfully defended itself against a lawsuit filed by a toy car manufacturer in Germany. The plaintiff sought an injunction and damages following an allegedly inadmissible seizure of goods at the border. Read more

21 Jan 2020

Sony v EUIPO: when “annulment” really means “annulment”

The EU General Court has annulled a decision of the Fourth Board of Appeal of the EUIPO in revocation proceedings involving Sony’s mark VITA, as the board had failed to fulfil its obligation to hand down a fresh decision on all the relevant issues. Read more

21 Jan 2020

Weeded out of scope: UDRP designed to address specific cybersquatting issues

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

20 Jan 2020

BBC recovers its TOP GEAR trademark after two-year battle

The Russian Intellectual Property Court has overturned its earlier decision in a case involving the invalidation of the British Broadcasting Corporation’s TOP GEAR trademark. Read more

20 Jan 2020

Nivea - recognise the blue?

The dispute between Unilever and Beiersdorf over the latter’s abstract colour mark for its ‘Nivea Blue’, which lasted for over a decade, has finally come to an end. Read more

17 Jan 2020

Is RING distinctive for doorbells and motion sensors?

In a blow to Amazon Technologies Inc, the EU General Court has confirmed that the figurative mark RING was descriptive in relation to doorbells, motion sensors and monitoring equipment. Read more

17 Jan 2020

‘Lotso’ more than non-exclusive licensor-licensee relationship needed for personal jurisdiction  

In Diece-Lisa Industries Inc v Disney Enterprises Inc, the US Court of Appeals for the Fifth Circuit has held that jurisdiction over the licensees does not extend personal jurisdiction to the licensor where the latter has no additional contacts with the forum. Read more

16 Jan 2020

IP Office overturns problematic lower-instance decision on recognition of English-language terms

In a victory for US media company Discovery Communications LLC, the Ecuadorian IP Office has overturned its prior finding that the English terms ‘animal’ and ‘planet’ would not be easily understood by the general Ecuadorian public.   Read more

15 Jan 2020

General Court confirms lack of likelihood of confusion between CRYSTAL and CRISTAL

In Super bock group v EUIPO, the EU General Court has confirmed that there was no likelihood of confusion between the mark CRYSTAL for non-alcoholic beverages and foodstuffs in Class 30 and the earlier Portuguese mark CRISTAL for beer in Class 32. Read more

15 Jan 2020

UDRP: the importance of full disclosure

A recent UDRP decision involving the domain name ‘breakforthcanada.com’ illustrates the importance of disclosing any relationship between the parties and mentioning any ongoing litigation. Read more

14 Jan 2020

Supreme Court provides guidance on assessment of evidence in trademark cancellation action

In a cancellation action involving the mark MI COPILOTO, the Chilean Supreme Court has considered whether uncertified copies could be admitted as evidence of a trademark’s reputation. Read more

14 Jan 2020

Munchkin wins IPEC baby bath design dispute against Shnuggle

The Intellectual Property Enterprise Court of England and Wales has found that Munchkin did not infringe Shnuggle’s registered Community designs and unregistered UK design rights by selling its Sit & Soak baby bath. Read more

13 Jan 2020

Seventh Circuit formally adopts Octane Fitness standard for trademark cases

The US Court of Appeals for the Seventh Circuit has joined its sister circuits in holding that the Supreme Court standard for awarding attorney’s fees in patent cases, set forth in Octane Fitness, was equally applicable to attorney’s fees claims under the Lanham Act. Read more

13 Jan 2020

Dell successful in two UDRP proceedings involving ‘.co’ domain names

Dell has recently prevailed in two UDRP proceedings involving ‘.co’ domain names consisting of its DELL trademark and a generic word. Read more

10 Jan 2020

CANNABIS decision: coffee and (space) cakes at the General Court

In Conte v EUIPO, the EU General Court has confirmed that the mark CANNABIS STORE AMSTERDAM was contrary to public policy or to accepted principles of morality under Article 7(1)(f) of EU Regulation 2017/1001. Read more

9 Jan 2020

Blow for Chanel as district court holds that rebottling is not an act of infringement 

In ScentWish Ltd v Chanel, the Tel Aviv District Court has held that the rebottling of CHANEL® perfumes does not constitute trademark infringement under the ‘genuine description’ exception provided for by Section 47 of the Trademarks Ordinance. Read more

8 Jan 2020

Cookie crumbles against injunction granted to terminated trademark licensee

In Mrs Fields Franchising LLC v MFGPC, the US Court of Appeals for the 10th Circuit has reversed the district court’s grant of a preliminary injunction after termination of the exclusive licence between the parties. Read more

8 Jan 2020

CJEU finds genuine use of EU collective mark for packaging waste system

In Der Grüne Punkt – Duales System Deutschland GmbH v EUIPO, the Court of Justice of the European Union has given guidance on the genuine use of collective marks, setting aside the judgment of the General Court.   Read more

7 Jan 2020

When ‘Nova Tela’ is as common as telenovelas

A recent UDRP decision concerning the domain name ‘novatela.com’ illustrates the challenges in establishing an absence of legitimate interest when domain name resellers register domain names consisting of common and widely used terms.  Read more

6 Jan 2020

CJEU on geographical designations of origin: German ‘Balsamico’ is permitted

The Court of Justice of the European Union has ruled that the protection of the name 'Aceto Balsamico di Modena' does not extend to the use of the non-geographical terms 'aceto' and 'balsamico'. Read more

20 Dec 2019

Shangri-La case: a trademark judgment that will please multinationals

Two recent judgments of the Mauritius Industrial Property Tribunal in Shangri-La Tours Ltd v Shangri-La International Hotel Management Limited represent an emphatic victory for the foreign defendant. Read more

20 Dec 2019

Supreme People's Court clarifies conditions for prior trademark use defence

In a landmark decision, the Supreme People's Court of China has clarified the requirements for the prior use defence under Article 59.3 of the Trademark Law.   Read more

19 Dec 2019

General Court confirms that there are no formal requirements for proof of use request in opposition proceedings

The decision of the EU General Court in Runnebaum Invest v EUIPO reinforces that there are no formal requirements for a request for proof of genuine use in opposition proceedings, provided that the request is clear and unambiguous. Read more

18 Dec 2019

Victory for Versace as design is rejected on the ground that it constitutes “unauthorised use of an IP right”

The Turkish Patent and Trademark Office has rejected a design application on the ground that it constituted an unauthorised use of Versace’s figurative trademarks under Article 67/2 of the Intellectual Property Code. Read more

17 Dec 2019

General Court confirms that VIBBLE is confusingly similar to VYBE

In a victory for German telecommunications company Telefonica, the General Court has confirmed that there was a likelihood of confusion between Soundio’s mark VIBBLE and Telefonica’s earlier mark VYBE. Read more

16 Dec 2019

Vietnam to amend Intellectual Property Law to comply with FTAs

Vietnam’s Ministry of Science and Technology has recently issued proposed amendments to the Intellectual Property Law. One of the aims is to bring Vietnam’s legislation into line with the new generation of free trade agreements - namely, the CPTPP and the EVFTA. Read more

16 Dec 2019

General Court confirms that mark representing a bell is not distinctive for Class 9 goods

The EU General Court has upheld a decision of the Second Board of Appeal of the EUIPO finding that a figurative sign representing a bell with a white contour on a black background was devoid of any distinctive character for goods in Class 9. Read more

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Vladimir Marenović
Head of Legal Department
Belgrade, Serbia
Zivko Mijatovic & Partners