Legal Updates

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16 Nov 2018

Flying dog flew away – UDRP panel denies domain name transfer and makes RDNH finding

In a recent decision under the Uniform Domain Name Dispute Resolution Policy, a panel has denied the transfer of a domain name and made a finding of reverse domain name hijacking due to the complainant's intentional misrepresentations. Read more

16 Nov 2018

The principle of trademark rights exhaustion in Russia: new development

In a recent case involving Masternet Corporation’s STAYER mark, the Russian IP court has clarified when the principle of the exhaustion of trademark rights will be applicable. Read more

15 Nov 2018

Leading hotel management company prevails in opposition proceedings against CAFE FOUR SEASONS

Four Seasons Hotels (Barbados) Ltd has been successful in opposition proceedings against the Lithuanian figurative trademark CAFE FOUR SEASONS for food and drink services in Class 43. Read more

15 Nov 2018

General Court: black-and-white registration certificate does not satisfy requirements for representation of earlier figurative mark   

In opposition proceedings between Aldi Einkauf and Aldo Supermarkets, the EU General Court has held that submitting a copy of a national registration certificate in black and white did not satisfy the conditions governing the representation of the earlier mark. Read more

14 Nov 2018

General Court: disclosure of earlier design cannot be proved by means of probabilities or suppositions

The decision of the EU General Court in Mamas and Papas Ltd v EUIPO, which concerned a registered Community design representing a cot bumper, shows that the parties should present their best evidence in proceedings not only before the court, but also before the EUIPO. Read more

14 Nov 2018

Should government act as defendant when private party appeals decision to cancel mark?

According to a proposal made by Norway’s Department of Justice in the context of the implementation of Directive 2017/2436, the government would no longer act as the counterparty when a decision to cancel a trademark is appealed to the district court. Read more

13 Nov 2018

UDRP proceedings: non-response does not mean transfer

A UDRP panel has refused to order the transfer of a domain name that partly incorporated the complainant's mark because the complainant failed to prove that the respondent had registered or used the domain name in bad faith - even though the latter did not respond. Read more

13 Nov 2018

Victory for Volvo as Patent and Market Court takes a stance on bad-faith applications

A recent case involving the registration by Green Stapler of the name of Volvo's "Made by Sweden" campaign shows how the Swedish Patent and Market Court will assess whether an applicant has acted in bad faith. Read more

12 Nov 2018

Preliminary draft Trademark Act: invalidity and cancellation proceedings

Following the approval of a preliminary draft law partially amending the Spanish Trademark Act in order to incorporate Directive 2015/2436, various consulting bodies have given their opinions on the draft text, highlighting certain aspects which they believed could be improved. Read more

12 Nov 2018

General Court: name of spa town eligible for registration for mineral waters

The EU General Court has annulled a decision of the EUIPO in which the latter had found that the mark DEVIN - the name of a Bulgarian spa town - for mineral waters was descriptive of the geographical origin of the goods. Read more

9 Nov 2018

Important changes to Trademarks Act and Rules due January 2019 – what you need to know

The UK Trademarks Act and Rules are due to change following the implementation by the UK Intellectual Property Office of Directive 2015/2436. This update highlights the various changes due to come into effect in January 2019. Read more

9 Nov 2018

Rights holders beware: criminal raid action deemed to be act of unfair competition

In a ground-breaking decision, the Turkish Court of Appeals has held that a criminal raid action constituted an act of unfair competition and that the complainant should pay compensation to the defendant for damages incurred due to the raid. Read more

8 Nov 2018

CJEU confirms that categorisation as "colour mark" at time of filing is relevant when assessing validity

The Court of Justice of the European Union has confirmed that the categorisation of a mark as a “colour mark” at the point of filing is relevant when assessing its validity. Read more

8 Nov 2018

TTAB dismisses NEW MAN cancellation petitions, finding no abandonment despite six years of non-use

The US Trademark Trial and Appeal Board has dismissed petitions for the cancellation of four NEW MAN marks for clothing, even though Newman only put the marks into use six years after acquiring them, and then only on a minimal basis. Read more

7 Nov 2018

Hasbro retains MONOPOLY trademark

The registrar of the UK Intellectual Property Office has dismissed an application to revoke Hasbro’s trademark registration for MONOPOLY on the ground that the mark had not been put to genuine use. Read more

7 Nov 2018

New drafts amendments to patent, utility model, design and trademark legislation – what you need to know

The Ukrainian Ministry of Economic Development and Trade has released new draft amendments to the patent, utility model, design and trademark legislation for public review. Read more

6 Nov 2018

Well-known healer’s name and alias protected to the benefit of his heirs

The Board of Appeal of Estonia has upheld oppositions filed by the heirs of well-known healer and writer Aleksander Heintalu (also known as Vigala Sass) against the registration of ALEKSANDER HEINTALU and VIGALA SASS. Read more

6 Nov 2018

Who is allowed to promote a MINI coffee machine and MINI XL coffee mugs?

Car manufacturer BMW has successfully challenged coffee retailer Tchibo’s use of ‘MINI’ for coffee machines and coffee mugs before the Frankfurt District Court. Read more

5 Nov 2018

CONVERSE CHUCK TAYLOR ALL STAR recognised as well-known trademark

The Court of Appeal of Peru has recognised the notoriety of CONVERSE CHUCK TAYLOR ALL STAR, in application of Articles 224 and 136(h) of Andean Community Decision 486. Read more

5 Nov 2018

 "Close call" involving recurrent online sales triggers minimum contacts, specific jurisdiction

The US Court of Appeals for the First Circuit has confirmed that a foreign company subjected itself to specific personal jurisdiction in a trademark dispute where that company had sizeable continued online sales to US customers. Read more

2 Nov 2018

Development of e-filing in Thailand: benefits of new system explained

Earlier this year Thailand’s Department of Intellectual Property launched a new e-filing system for trademark, patent, design and copyright applications. This update reviews the benefits of using the new e-filing system. Read more

2 Nov 2018

Bacardi’s application for 42 BELOW sunk by non-registered national trademark

The EU General Court has confirmed that there was a likelihood of confusion between Bacardi’s mark 42 BELOW for alcoholic beverages and the earlier non-registered mark VODKA 42 used in the Czech Republic and Slovakia for the same goods. Read more

1 Nov 2018

New option available to reduce time between filing and publication of trademark applications

A new option is available in Colombia to reduce the prosecution time of trademark applications. In certain circumstances, it is now possible to skip the formal examination of the products/services covered by the application prior to its publication. Read more

1 Nov 2018

DETROIT ATHLETIC CO.: not even a sporting chance for registration

The US Court of Appeals for the Federal Circuit has affirmed a TTAB decision sustaining the refusal to register the mark DETROIT ATHLETIC CO. based on a likelihood of confusion with the earlier mark DETROIT ATHLETIC CLUB. Read more

31 Oct 2018

Meitu afforded well-known trademark protection despite registering loss in association with core mark

China’s Supreme People’s Court has confirmed that the core mark of technology company Meitu should be recognised as well known. The case shows that the nature of the relevant industry may affect the determination of whether a mark is well known. Read more

31 Oct 2018

Settlement privilege and domain name arbitrations: the case of ‘potterybarnbaby.ca’

A recent decision under Canada’s Domain Name Dispute Resolution Policy shows that deeming correspondence “without prejudice” may impact a complainant’s ability to prove the registrant’s bad faith and could ultimately decide the outcome of the dispute. Read more

30 Oct 2018

GOLDEN BALLS v BALLON D’OR: the golden rules of the assessment of reputation

In the long-running dispute over the marks GOLDEN BALLS and BALLON D’OR, the EU General Court has clarified the parameters for the assessment of reputation in the context of the appreciation of the risk of confusion. Read more

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