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Today

Delhi High Court: use of word that is prominent in registered logo mark amounts to infringement

In Max Healthcare v Sahrudya Health Care, the Delhi High Court has held that the use by the defendant of a word that was prominent in the plaintiff’s logo marks amounted to infringement. Read more

Today

CJEU clarifies jurisdiction in online infringement cases: the consumers' country is the place of infringement

In a victory for trademark owners, the Court of Justice of the European Union has clarified the issue of jurisdiction in cases involving the online infringement of EU trademarks. Read more

18 Sep 2019

Roughing the applicant: USPTO refuses Tom Brady’s TOM TERRIFIC trademark applications

The USPTO has refused New England Patriots quarterback Tom Brady’s applications for TOM TERRIFIC in Classes 16 and 25, finding that the mark was “uniquely and unmistakably” associated with former New York Mets pitcher Tom Seaver. Read more

18 Sep 2019

New Balance foiled in its attempt to invalidate 百伦 marks

A recent case involving New Balance and its Chinese-character mark 新百伦 highlights the difficulties faced by foreign companies seeking to adopt a Chinese mark to engage with Chinese consumers. Read more

17 Sep 2019

Peruvian authorities crack down on counterfeiters: huge raid conducted in Lima shopping centre

The Peruvian authorities have recently carried out one of the biggest-ever strikes against counterfeiters, raiding 120 informal establishments in the Polvos Azules shopping centre, a hotspot for fakes in Peru. Read more

17 Sep 2019

Strategies and pitfalls with fees under Canada’s new trademark regime

On 17 June 2019 significant amendments were introduced to the Trademarks Act with a view to bringing Canada’s trademark regime into line with the Nice Agreement, among others. This update provides some fee-based strategies to use under the amended act. Read more

16 Sep 2019

Delhi High Court: VISTARA deserves to be recognised as well-known mark

In Tata Sia Airlines Ltd v Pilot 18 Aviation Book Store, the Delhi High Court has permanently restrained the defendants from using the trademark VISTARA and directed them to pay Rs200,000 in costs to the plaintiff. Read more

16 Sep 2019

MONOPOLY case: a new light on bad faith?

The decision of the Board of Appeal of the EUIPO in invalidity proceedings involving Hasbro Inc’s mark MONOPOLY marked a new approach in the application of the concept of ‘bad faith’ under Article 59(1)(b) of the Trademark Regulation. Read more

13 Sep 2019

Figurative mark RIMI GOODLIFE found to be similar to word mark GOODLIFE

The Appeals Division of the Lithuanian State Patent Bureau has upheld an opposition filed by Goodlife Foods Limited against the registration of the figurative mark RIMI GOODLIFE by ICA AB. Read more

13 Sep 2019

Defensive trademark registrations: the adidas and Mastercard cases

In two recent cases, defensive EU trademarks belonging to adidas and Mastercard have been cancelled on the grounds of non-use. Read more

12 Sep 2019

AUDI v AUDITRAINING: misunderstanding the concept of dilution of notorious trademarks

In opposition proceedings filed by Audi AG against the registration of the mark AUDITRAINING in Class 41, the National Trademark Office of Colombia has arguably misunderstood the concept of dilution of notorious trademarks. Read more

12 Sep 2019

Chanel loses Chinese trademark infringement case involving ‘double C’ logo

In a rare loss for French fashion house Chanel, the Guangzhou IP Court has vacated a decision of the Haizhu District People’s Court in which the latter had found that the sale of jewellery in the shape of Chanel’s ‘double C’ logo constituted trademark infringement. Read more

11 Sep 2019

Travel portal to face trial in criminal proceedings for trademark infringement

In a dispute involving travel portals Ezeego and Make My Trip, the Bombay High Court has refused to quash an order for issuance of summons passed by the Magistrate’s Court in criminal proceedings for trademark infringement. Read more

11 Sep 2019

Blow for Puma as Danish court confirms dismissal of invalidity action

The Danish Maritime and Commercial High Court has upheld a decision of the Patent and Trademark Office dismissing an invalidity action filed by Puma against a registered trademark consisting of a stripe.   Read more

10 Sep 2019

Taking the Pisco: protecting regional products

The discussion of geographical indications (GIs) in Australia has recently heated up as IP protection is a focus of the forthcoming Australia-EU Free Trade Agreement. Here is what Australian producers need to know. Read more

10 Sep 2019

CJEU: single clinical trial not sufficient for genuine use

In Viridis Pharmaceutical Ltd v EUIPO, the Court of Justice of the European Union has confirmed that there was no genuine use of Viridis’ trademark BOSWELAN on a pharmaceutical product nor proper reasons for non-use. Read more

9 Sep 2019

EU-Vietnam Free Trade Agreement and how it affects trademarks, GIs and enforcement

The EU-Vietnam Free Trade Agreement, which was signed on 30 June 2019, has been described by the European Union as “the most ambitious free trade deal ever concluded with a developing country”. The agreement is expected to bring many changes to Vietnam’s IP regulations. Read more

9 Sep 2019

Federal Court clarifies limitation of own name defence

In Mitolo Wines Aust Pty Ltd v Vito Mitolo & Son Pty Ltd, the Federal Court of Australia has found that use of the name V. Mitolo and Son infringed trademark registrations for the mark MITOLO in relation to wine. Read more

6 Sep 2019

Dutch court of appeal sets up confidentiality club in IP proceedings

In a promising development, the Court of Appeal of The Hague has set up a confidentiality club to allow the alleged infringer to submit confidential information in trademark proceedings. Read more

6 Sep 2019

New law creates protection for historical trademarks but fails to define key measures

A new law that introduced enhanced protection for Italian-sounding terms, as well as a new category for historical trademarks of national interest, risks alienating foreign investors and conflicting with the Italian Constitution, as well as EU law, due to a lack of definition.  Read more

5 Sep 2019

Trademarks and Thailand’s new medicinal cannabis sector

Under the new Thai regime for medicinal cannabis, it appears that applications for goods related to cannabis for medical purposes are proving acceptable, while those made up of words or images relating to cannabis are not. Read more

5 Sep 2019

Rhyme as the reason: Seventh Circuit’s decision in SportFuel Inc v PepsiCo Inc

In SportFuel Inc v PepsiCo Inc, the US Court of Appeals for the Seventh Circuit has upheld a summary judgment decision for the defendants based on fair use of a descriptive expression, despite the plaintiff’s trademark registrations of the same expression. Read more

4 Sep 2019

Assessing the balance of convenience in interim injunctions to prevent passing off

In an application for an interim injunction to prevent passing off, the High Court has determined that the relative merits of the parties’ cases and the effect of an undertaking provided by the defendant should be considered in assessing the balance of convenience. Read more

4 Sep 2019

INDECOPI offers training for influencers to prevent potential IP infringement

The growing importance of influencers and the impact that they have on consumer decisions is undeniable. As such, the Peru National Institute for the Defence of Competition and Intellectual Property (INDECOPI) has published a report on the supervision and training actions to be carried out in relation to the content that influencers share on various social media networks. Read more

3 Sep 2019

BEAUTY BAY trademark not infringed by BEAUTY & THE BAY

Beauty Bay Ltd v Benefit Cosmetics Ltd concerned the use of the mark BEAUTY & THE BAY, which the claimants alleged constituted trademark infringement and passing off in respect of their trademark BEAUTY BAY. In finding for the defendant, the judge considered that there was no likelihood of confusion between the marks and that the similarities between them were not sufficient to establish a link for a claim based on unfair advantage. Read more

3 Sep 2019

Significant amendments to Estonian trademark legislation enter into force

On 1 April 2019 amendments to the Estonian Trademark Act and the related secondary legislation entered into force, which have introduced important changes and simplified the trademark registration procedure in Estonia. Read more

2 Sep 2019

Heartbreak hotel: UDRP complainant fails to obtain transfer of ‘villagehotels.app’

A recent UDRP decision highlights how having a trademark does not necessarily mean that the rights holder will succeed in obtaining the transfer of a domain name, even if it is identical to such mark and the website associated with the domain name appears to have always been inactive. Read more

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