Legal Updates

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Today

Blow for Valentino SpA as opposition against VALENTINO RUDY mark is dismissed

Italian fashion company Valentino SpA’s opposition against the registration of a figurative mark consisting of a ‘V’ device element and the word element 'Valentino Rudy' in Singapore has failed on all grounds. Read more

Today

Ukraine amends its trademark law – key changes highlighted

Amendments to the Ukrainian trademark law entered into force on 16 August 2020, bringing about several important changes. Here is what you need to know. Read more

17 Sep 2020

No success for Glaxo in protecting purple colour mark

The threshold to demonstrate acquired distinctiveness is extremely high for colour marks; compounded by the many pitfalls intrinsic in survey evidence, meeting such threshold now seems near impossible in practice, even for the most well-known brands. Read more

17 Sep 2020

Higher Court allows prior use defence in EUTM infringement proceedings

This decision of the Higher Court of Slovenia in a dispute involving the Skenderbeu brandy is significant in that it establishes that the prior use defence can be used against EUTMs, and not only national trademarks. Read more

16 Sep 2020

Shoot for the moon (boots) and if you miss, you’ll land… with a non-distinctive mark

In a blow to Tecnica Group SpA, the manufacturer of the popular ‘moon boots’, the First Board of Appeal of the EUIPO has confirmed that Tecnica’s 3D mark for the shape of its boots lacked distinctiveness. Read more

16 Sep 2020

UDRP: coincidental similarity is not typosquatting

This case involving the domain name ‘trueworths.com’ and the trademark TRUWORTHS demonstrates that obtaining a transfer under the UDRP is perhaps not as easy as it may seem in certain more complex scenarios. Read more

15 Sep 2020

Interflora loses Google Ads case

The Danish Maritime and Commercial High Court has dealt a blow to flower delivery network Interflora, finding that competitor Abella Blomster did not use ‘interflora’ as a keyword in Google Ads. Read more

15 Sep 2020

Limitation of product description in trademark registration following non-use cancellation action

Colombia’s Trademark Office has recently clarified the interpretation of Article 165 of Andean Community Decision 486 concerning the coverage of a trademark registration following a cancellation action on the ground of non-use. Read more

14 Sep 2020

Lessons from a pandemic: long-term impacts on Canadian trademark practice

The Canadian Trademarks Office and the Federal Court of Canada have taken concrete steps to mitigate the effects of the covid-19 pandemic that have permanently changed trademark practice in Canada. Read more

14 Sep 2020

New decree brings clarity and stronger administrative sanctions against violations involving counterfeit and illegal goods

A new decree, which will come into force 15 October 2020, should help the work of Vietnam’s enforcement authorities when dealing with violations involving counterfeit and banned goods, both offline and online. Read more

11 Sep 2020

Supreme Administrative Court: goods in Class 25 and services in Class 41 may be complementary

This decision of the Supreme Administrative Court of Finland in a case involving the mark NFC FIGHT NIGHT in Class 25 and the earlier mark UFC FIGHT NIGHT in Class 41 may lead to an increased number of oppositions claiming that goods and services are complementary. Read more

11 Sep 2020

Intellectual Property Office amends official fee structure

Amendments to the regulation on fees charged by the Croatian Intellectual Property Office entered into force on 8 August 2020, amending trademark fees, introducing utility model fees and modifying patent examination fees. Read more

10 Sep 2020

WELMAX case: time limits before the EUIPO and how to calculate them

This decision of the EU General Court considers several interesting procedural issues, such as the time limit for an appeal before the Board of Appeal of the EUIPO and the point from which that time limit starts to run. Read more

10 Sep 2020

UDRP complaint fails by "a large margin"

This case, which involved the domain name ‘gen.com’, presents a number of key points for complainants considering filing a UDRP complaint - including the importance of a frank and objective appraisal of the strength of one's case at the outset. Read more

9 Sep 2020

Crocs Inc victorious on appeal in oppositions against 3D marks in Class 25

In a victory for US footwear company Crocs Inc, the Administrative Court of Appeals of INDECOPI in Peru has rejected Industrias Humarsa EIRL’s applications for the registration of 3D trademarks for shoes. Read more

9 Sep 2020

The rise of K-beauty trademark filings

Trademark applications for cosmetics in Korea have increased by approximately 39.6% between 2014 and 2019, reflecting the rising global popularity of Korean products in general, including K-beauty, K-pop and K-dramas. Read more

8 Sep 2020

Battle of the sawmills: court issues decision in LUMBER case

Canadian company Norwood Industries Inc has suffered a double blow in its dispute with Swedish competitor JM:s Plåt & Mek AB over marks containing the prefix ‘lumber’. Read more

8 Sep 2020

Diamonds to dust? Too many factual disputes preclude summary judgment in Tiffany v Costco

The US Court of Appeals for the Second Circuit has vacated a district court’s summary judgment grant in favour of Tiffany because factual disputes existed around whether Costco’s use of the word ‘Tiffany’ was merely descriptive of a particular ring setting. Read more

7 Sep 2020

Republic of Panama successfully defends itself against international arbitration claim filed by Bridgestone

The Tribunal of the International Centre for Settlement of Investment Disputes has dismissed a $20 million claim filed by Bridgestone Licensing Services Inc and Bridgestone Americas Inc against the Republic of Panama. Read more

7 Sep 2020

BLACK SHEEP trademark dispute - not all sheep are the same

This Australian decision provides guidance on what types of evidence may - or may not - be sufficient to prove use of a trademark in the course of trade. Read more

4 Sep 2020

EUIPO joins WIPO Digital Access Service for EU registered design applications

In a welcome announcement, the EUIPO has confirmed that it is now possible for any submitted EU registered design application to be made available to the Digital Access Service run by WIPO. Read more

4 Sep 2020

Trademark filing under Myanmar’s new trademark law to begin on 1 October 2020

In a welcome development for trademark owners worldwide, the Myanmar government has announced that the soft opening period of the Myanmar Department of Intellectual Property under the new trademark law will begin on 1 October 2020. Read more

3 Sep 2020

Several issues to be aware of in the battle against bad-faith trademarks in China

This update examines several issues of interest in the fight against bad-faith trademark applications in China, including whether the recently amended Article 4 of the Trademark Law can be used to oppose or invalidate a trademark if there is sufficient evidence of bad faith. Read more

3 Sep 2020

Novartis obtains cancellation of GSK’s trademark on ground of non-use

In a victory for multinational pharmaceutical company Novartis AG, the Colombian Trademark Office has ordered the cancellation of a trademark owned by GlaxoSmithKline, finding that it had not been used in the relevant class. Read more

2 Sep 2020

Owners of Romanian trademarks and international registrations designating Romania invited to specify scope of goods and services

Following the coming into force of a new trademark law in July, owners of Romanian trademarks and international registrations designating Romania that use entire class headings are invited to file a declaration specifying the goods or services intended to be covered. Read more

2 Sep 2020

New Law for the Protection of Industrial Property to come into force – what you need to know

Mexico’s new Federal Law for the Protection of Industrial Property was published in the Official Gazette on 1 July 2020 and will come into force on 5 November 2020. This update highlights the key changes that trademark owners and practitioners should be aware of. Read more

1 Sep 2020

The protection of unregistered well-known marks by the EU courts under Article 6bis of the Paris Convention

This decision of the EU General Court in invalidity proceedings gives a useful overview of the differences between the scope of protection of unregistered well-known trademarks on the one hand, and registered well-known trademarks on the other. Read more

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