Legal Updates

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24 May 2019

Appointed person cuts tailor down to size

The appointed person has put an end to a trademark dispute between Tailor & Cutter (Cambridge) Limited, a bespoke tailor based in England, and multinational retail corporation Walmart Apollo LLC. Read more

24 May 2019

General Court: bicycles and motorcycles similar to a low degree

In Zweirad-Center Stadler v EUIPO, the EU General Court has confirmed that there was a likelihood of confusion between two TRIUMPH word marks for goods in Classes 9, 12 and 25. Read more

23 May 2019

UDRP cases where domain name was registered with complainant's consent will usually fail

A UDRP panel has refused to order the transfer of the domain name ‘bialettiusa.com’ because the complainant failed to demonstrate that the respondent, a former distributor of the complainant’s products, had registered the domain name in bad faith. Read more

23 May 2019

Bombay High Court quotes Mahatma Gandhi in yet another decision imposing heavy costs on infringers

In Nippon Steel & Sumitomo Metal Corporation v Jain, the Bombay High Court has decided to make an example of the defendants and imposed hefty costs of Rs50 million. Read more

22 May 2019

Beiersdorf v Koni: passing off and a composite of get-ups

In Beiersdorf AG v Koni Multinational Brands (Pty) Ltd, the South African High Court has considered the use by one party of a get-up that was a composite of various get-ups used by another party. Read more

22 May 2019

Trump International loses High Court appeal

The High Court has upheld a decision of the UK Intellectual Property Office finding that the application for TRUMP TV, filed by ‘trademark troll’ Michael Gleissner in the name of Trump International Limited, had been made in bad faith. Read more

21 May 2019

ILPTO upholds registration of former Soviet trademarks for sweets

The Israel Patent and Trademark Office has considered an interesting dispute concerning several marks registered in the name of two major Russian confectionery manufacturers for sweets from the Soviet era. Read more

21 May 2019

Smooth victory for Bega in peanut butter trade dress case against Kraft

A dispute between Bega Cheese and Kraft Foods in Australia has been resolved with the Federal Court awarding Bega the exclusive rights to use a distinctive yellow, red and blue packaging to market its peanut butter.  Read more

20 May 2019

Federal Circuit: trademark decisions rendered by International Trade Commission do not have preclusive effect

In Swagway LLC v International Trade Commission, the US Court of Appeals for the Federal Circuit has held that trademark decisions of the International Trade Commission, like its patent decisions, do not have preclusive effect. Read more

20 May 2019

Licensor prevails in dispute over use of brand name post-termination

A recent case in India has addressed the question of whether a licensee can claim rights in a licensed mark when faced with the termination of the licence agreement. Read more

17 May 2019

Supreme Court clarifies conditions for existence of legal interest in non-infringement action

In a dispute between wine and spirits producers Kantina and Adol, the Slovenian Supreme Court has set aside the first and second-instance decisions, which had rejected a non-infringement action filed by Kantina on formal grounds. Read more

17 May 2019

GLENFIDDICH v GLENFIELD: battle of the label trademarks

The UK Intellectual Property Office has issued a somewhat unexpected decision in a case involving an application for the label mark GLENFIELD by an India-based drinks company owner, which was opposed by Scotch whisky distiller William Grant & Sons. Read more

16 May 2019

Vested rights clause restores trademark to original applicant

In Sköld v Galderma Laboratories LP, the US Court of Appeals for the Third Circuit has addressed the issue of trademark ownership under since-terminated development and commercialisation agreements. Read more

16 May 2019

General Court reaffirms that new relative grounds for refusal cannot be raised after expiry of relevant period

In Lupu v EUIPO, the EU General Court has confirmed that, within the context of opposition proceedings, relative grounds for refusal cannot be raised after the expiry of the term prescribed by law. Read more

15 May 2019

European Union adopts new ‘.eu’ Regulation

The European Union has adopted Regulation 2019/517, known as the ‘.eu’ Regulation, which seeks to future-proof the regulatory framework and to promote the digital single market. Read more

15 May 2019

EU Trademark Court issues another ruling on use of well-known marks to sell smell-alike perfumes

Spain’s EU Trademark Court has upheld a first-instance decision in which Equivalenza Retail SL had been sentenced for infringing various trademarks, owned by Hugo Boss, Gucci and Lacoste, among others, in the context of its smell-alike business.  Read more

14 May 2019

An update on sound mark protection in Thailand

Although sound mark protection is a relatively new concept in Thailand, it is another option for trademark protection in which IP owners from around the world should take interest. Read more

14 May 2019

TICK DIFFERENT: Apple loses to watchmaker Swatch before Swiss court

The Swiss Federal Administrative Court has considered an opposition filed by US tech giant Apple against Swiss watchmaker Swatch’s application for the registration of the mark TICK DIFFERENT for Class 14 goods, including jewellery and watches. Read more

13 May 2019

USTR's Special 301 Report 2019: focus on Indonesia

According to the latest Special 301 Report of the US Trade Representative, Indonesia - which features on the Priority Watch List - suffers from many problems, including widespread piracy and counterfeiting. Read more

13 May 2019

Delhi High Court directs drug authorities to regulate misuse of similar brand names

The decision of the Delhi High Court in Curewell Drugs & Pharmaceuticals v Ridley Life Science creates a strict action plan from the moment that a drug and its packaging are created. Read more

10 May 2019

Russian Supreme Court plenum adopts ruling providing guidance on IP issues

Shortly before World IP Day the plenum of the Supreme Court adopted a ruling on IP issues. The ruling document contains important guidelines and clarifications of the law, which are obligatory for all courts. Read more

10 May 2019

Madrid Application Receiving Office opens for business in Thailand

The Madrid Protocol entered into force on 7 November 2017. Within its first 17 months of enactment, there have been more than 9,000 Madrid applications that designate Thailand. To cope with the increasing number of applicants, the Department of Intellectual Property has established the Madrid Application Receiving Office. However, rights holders should be aware of the peculiarities of local practice to avoid rejection and ensure enforceability. Read more

9 May 2019

Free speech rules out transfer of Freemasons domain name under UDRP

A WIPO panel has refused to transfer the domain name ‘queensland-freemasons.com’ under the UDRP, finding that the respondent was making a legitimate non-commercial use of the domain name. Read more

9 May 2019

New commercial loyalty law

The Argentine Executive has passed a new law regulating commercial loyalty, which – in relation to trademarks – contains sections on unfair competition, comparative advertising, advertising and promotion, denominations of origin and product identification. Read more

8 May 2019

Are snack bars related to energy drink powders and bicycles?

In Trek Bicycle v Natural Balance Foods, the TTAB considered whether there was a likelihood of confusion between the figurative mark TREK for snack bars and earlier TREK marks for bicycles and energy drink powders, among other things. Read more

8 May 2019

Can mum still go to Iceland now that EUIPO has ruled mark invalid?

The affirmation that Iceland Foods’ EU registration for ICELAND is invalid has reinforced the high threshold of proving acquired distinctive character for contested marks and how crucial it is to provide sufficient evidence. Read more

7 May 2019

Delhi High Court remands single judge’s dismissal of Louboutin’s claim for exclusivity

The Division Bench of the Delhi High Court has set aside the decision of a single judge dismissing Louboutin’s claim for exclusivity in a single colour and remanded the matter back for further consideration by the judge. Read more

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