Legal Updates

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25 Jan 2021

Strengthened IP protection in China: key amendments highlighted

Recent amendments to the Patent Law, Copyright Law and Criminal Law demonstrate the state’s commitment to strengthening IP protection in China, and to adapting to the advancements of society and technology. Read more

25 Jan 2021

Good news for IP owners as several IP treaties are reinstated in Venezuela

In a welcome development for IP rights owners, late last year SAPI announced the direct application of the TRIPS Agreement and other international IP treaties in Venezuela. Read more

22 Jan 2021

No likelihood of confusion between BIM FREELANCE and BIM READY due to relevant public’s high level of attention

In this arguably debatable decision, the EU General Court concluded - contrary to the EUIPO - that there was no likelihood of confusion between BIM READY and BIM FREELANCE for “training services” in Class 41. Read more

22 Jan 2021

Vans successfully registers iconic ‘Checkerboard Slip-On’ design for trainers

The Peruvian Trademark Office’s Direction of Distinctive Signs has upheld an appeal by Vans Inc claiming that its internationally famous ‘Checkerboard Slip-On’ design has a high level of distinctiveness and is associated with a specific business origin. Read more

21 Jan 2021

Swissness – recent developments in the protection of the ‘Swiss’ brand

Following a recent evaluation of the Swissness legislation, which came into force four years ago, the Federal Council has noted that there is no need to revise the legislation, but there is still a need for action and enforcement - particularly abroad. Read more

21 Jan 2021

A not so EASY task after all: easyGroup’s EASY mark found to be devoid of distinctive character

easyGroup’s attempt to strengthen its rights in the EASY family of marks has been thwarted by the UKIPO, which refused to register the mark EASY for various services in Classes 35, 39 and 43. Read more

20 Jan 2021

E-BOKS v EBOX: a trademark setback that e-Boks didn’t sign up for

Following a victory at the Swedish Patent and Market Court, electronic signature provider e-Boks was dealt a blow when the appeal court found that there was no likelihood of confusion between E-BOKS and EBOX. Read more

20 Jan 2021

CNIPA clarifies that confusing colours can make a mark infringing

Additional certainty on whether the colour choices for a mark can make it infringing has been issued following a case involving Tommy Hilfiger’s famous flag. Read more

19 Jan 2021

This mash-up is not a place you’ll go: Seuss copyright will ‘live long and prosper’

In a case involving a Dr Seuss and Star Trek mash-up, the US Court of Appeals for the Ninth Circuit considered claims of both copyright and trademark infringement. Read more

19 Jan 2021

IN v IN BAR: US nutrition company Weider successful in Singapore opposition proceedings

Weider Global Nutrition, the owner of the mark IN and ‘in’-formative marks in Class 32, has prevailed in opposition proceedings against the registration of IN BAR for nutritional supplements in Class 5. Read more

18 Jan 2021

In-N-Out makes mincemeat of Hashtag Burgers

US fast-food restaurant chain In-N-Out Burgers objected to the use of DOWN-N-OUT by Hashtag Burgers in Australia. The decision shows that it is not necessary to have a place of business in the country in order to maintain a passing-off action. Read more

18 Jan 2021

Court of Appeals finds likelihood of confusion between short marks in surprising decision

In this somewhat controversial decision, the Turkish Court of Appeals seems to have changed its approach to the role of weak trademarks in the assessment of confusing similarity. Read more

15 Jan 2021

Stricter requirements for proving use of a trademark through invoices

The National Service of Intellectual Rights of Ecuador has recently issued several resolutions which have radically changed the criteria for using invoices as proof of use. Read more

15 Jan 2021

Protocol on Eurasian design patents to enter into force in March 2021

The Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention will enter into force for Kyrgyzstan, Azerbaijan and Armenia on 17 March 2021. Read more

14 Jan 2021

Courts uphold TRAB decision to invalidate trademark consisting of Mongolian place name

These invalidation proceedings involving the mark 阿尔山 - the Chinese transliteration of ‘Aershan’, a city in Inner Mongolia - have been selected as one of the top 10 “Exemplary Cases of Trademark Grant and Affirmation of the Year 2019”. Read more

14 Jan 2021

The digitalisation of trademark records in Nigeria: urgent need for action

While an online filing platform was introduced at the Trademark Registry in 2012, all other stages of processing applications are still conducted manually - and the problems linked to these manual processes only became more pronounced during the recent lockdown. Read more

13 Jan 2021

CJEU: reproduction of shape or appearance of PDO-protected product prohibited in certain cases

In this case involving Morbier cheese, the Court of Justice of the European Union considered whether the shape or appearance of a product may infringe a protected designation of origin. Read more

13 Jan 2021

Fifth Circuit: no preliminary injunction in boozy beverage trademark fight

With a booming market for hard seltzers and ready-to-drink cocktails, disputes over brand names have inevitably followed. Here, Future Proof Brands requested a preliminary injunction against Molson Coors’ entry into that market. Read more

12 Jan 2021

Civil IP Court clamps down on monopoly rights on widely used colours

In a case involving the use of the same colour combination for confectionary products, a Turkish court has held that the use of identical colours or colour combinations is not in itself sufficient to cause unfair competition. Read more

12 Jan 2021

The UDRP is not a forum for parties to resolve complex business disputes

This UDRP decision highlights the importance of clear contractual provisions that account for the use of a domain name pursuant to a business relationship, separate from other classes of intellectual property. Read more

11 Jan 2021

No love lost in General Court invalidity action based on goodwill in UK unregistered trademark

In these invalidity proceedings against the mark JCE HOTTINGUER based on the unregistered earlier national trademark HOTTINGER, the EU General Court considered the conditions for the application of Article 8(4) of Regulation 207/2009. Read more

11 Jan 2021

Tommy Hilfiger obtains invalidation of similar figurative trademark

This case shows that the commercial use of a registered trademark should be considered in invalidity proceedings – especially those involving bad faith. Read more

8 Jan 2021

P&G's PITERA mark is famous, says Patent Court

In a victory for The Procter & Gamble Company, the Patent Court of Korea has held that the PITERA mark is famous in South Korea, independently from the SK-II brand. Read more

8 Jan 2021

Court awards publishing house Rmb1.5 million in damages for trade dress infringement

A Chinese court has awarded the publishing house of the Dictionary of Frequently Used Ancient Chinese Characters Rmb1.5 million in damages in the country's first court ruling to hold a book planning firm and a publisher liable for joint infringement in a dispute concerning trade dress. Read more

7 Jan 2021

Forbo v EUIPO: beware of what you eat before the deadline for filing a brief

The decision of the EU General Court in this highly unusual case could open the door to quasi-abusive requests for restitutio in integrum. Read more

7 Jan 2021

Turkish appeals court finds for applicants by overturning longstanding ex officio refusal practice

A ruling by Turkey’s appeals court removes authority from the Re-examination and Evaluation Board for expanding the scope or the grounds of ex officio refusals issued by the Patent and Trademark Office. Read more

6 Jan 2021

Beverage manufacturer fined for using confusingly similar packaging

Beverage manufacturer Dnipro Alcohol has been fined for violating Ukrainian competition protection legislation in a dispute with rival Strongdrink. Read more

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