Legal Updates

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Today

Priority claims and IP rights in Nigeria: urgent call for action

The Paris Convention for the Protection of Industrial Property has not yet been fully implemented in Nigeria, which has triggered recent calls for action by stakeholders. Read more

Today

Kiwis will not confuse port and other wines

These New Zealand opposition proceedings serve as a reminder that, even where the marks and the goods are found to be similar, the opponent is not always certain to win. Read more

29 Jul 2021

Sound marks in the European Union: General Court rules for the first time on registration of sound mark submitted in audio format

An audio file containing the sound made by the opening of a drinks can, followed by silence and a fizzing sound, cannot be registered as a trademark for various drinks and metal containers for storage or transport. Read more

29 Jul 2021

Supreme Court confirms that use of third-party trademarks for smell-alike perfumes is unlawful

The Supreme Court has dismissed the appeal filed by smell-alike perfume company Equivalenza over claims of trademark infringement. The court, referring to L’Oréal v Bellure, held that Equivalenza took advantage of the reputation of perfumes of well-known brands. Read more

28 Jul 2021

Requirements for proof of use - a textbook treatise by the General Court

In these proceedings for the revocation of the mark I-COSMETICS for non-use, the General Court has laid down in textbook fashion the requirements for proof of use of a trademark. Read more

28 Jul 2021

Chevron unsuccessful in red canopy fascia case

This decision of the Federal Court of Australia highlights that, if the colour of a building is central to a brand, then it should be expressly dealt with in any licence agreement, separate from other branding components. Read more

27 Jul 2021

French Supreme Court issues decision in Morbier case following CJEU’s preliminary ruling

Late last year, the CJEU issued a preliminary ruling on some questions concerning the reproduction of the shape or appearance of a product (here, Morbier cheese) protected by a PDO. The French Supreme Court has now issued its decision based on the CJEU’s answers. Read more

27 Jul 2021

‘anticoupang.com’ decision: free speech and the UDRP

This decision highlights that trademark owners should carefully consider whether a UDRP complaint is an appropriate tool when faced with genuine criticism websites. Read more

26 Jul 2021

Trademark Office backs Xiaomi in opposition against copycat MI logo

This case was recently selected as one of the Chinese Trademark Office’s “Exemplary Trademark Opposition and Adjudication Cases of 2020”. Read more

26 Jul 2021

Significant raid carried out against importer of fake mobile phone accessories

More than 15,000 fake mobile phone accessories - bearing brands such as Apple, Huawei, Samsung and Xiaomi - have been seized following a huge raid in a commercial establishment and warehouse located in Downtown Lima. Read more

23 Jul 2021

Is Pirelli’s ‘tyre groove’ trademark valid?

The Court of Justice of the European Union has issued its decision in the decade-long dispute between Italian tyre manufacturer Pirelli Tyre SpA and Japanese company The Yokohama Rubber Co Ltd. Read more

23 Jul 2021

Domain name disputes in Thailand: how to deal with the pitfalls of the country’s domain registration policy

Domain name disputes sometimes arise between trademark owners and Thai-registered companies that exploit the gaps in Thailand’s current domain registration policy. As demonstrated in a recent dispute, court proceedings are not the only option for mark owners. Read more

22 Jul 2021

Trouble in paradise (island)? No double territoriality requirement for EU trademark use

This decision of the First Board of Appeal of the EUIPO provides a useful explanation of the territoriality aspect of the genuine use requirement. Read more

22 Jul 2021

IP Vietnam implements more flexible requirements regarding authorised signatories in IP procedures

Meeting the requirements set forth by Notice No 13822 with regard to authorised signatories has proven challenging - or even impossible - for many overseas IP rights holders. IP Vietnam has now relaxed these requirements by issuing Notice No 6959. Read more

21 Jul 2021

UDRP: caution required for less fanciful trademarks

UDRP complainants should exercise caution when their trademarks are not completely fanciful, especially where the marks also consist of dictionary terms in certain languages. Read more

21 Jul 2021

No stop for NOMAD

The General Court found that the relevant public would not immediately perceive the word ‘nomad’ as referring to the idea of travel and, in any event, this would not emphasise a positive quality of the goods. Read more

20 Jul 2021

Court of Appeal: directors jointly and severally liable as accessories, but only liable to account for own profits

In this appeal arising from a trademark dispute involving two POLO CLUB marks, the Court of Appeal has considered for the first time whether accessories should be liable to account not only for their individual salaries, but also for the principal's profits. Read more

20 Jul 2021

High Court issues landmark decision on industrial design infringement

This is first time that the High Court of Uganda has considered the issue of the infringement of industrial design rights. Read more

19 Jul 2021

Russian Champagne - a real Sham(panskoye)? New Russian law redefines Champagne and causes a lot of fuss over fizz

This update looks at the implications of the shock announcement from Russia concerning changes to the legal definitions of ‘Champagne’ and ‘Cognac’ in the country. Read more

19 Jul 2021

New mandatory precedent regarding assessment of genuine interest in Andean opposition

According to a recent resolution of the Administrative Court of Appeals, the assessment of the genuine interest - based on a trademark application or a registered trademark - in an Andean opposition must be evaluated at the time of filing of the opposition. Read more

16 Jul 2021

Facetec saves face in ZOOM dispute

This decision of the General Court will be of particular interest to tech companies and brand owners within the software space. Read more

16 Jul 2021

Budding cannabis entrepreneur learns the hard way that parody doesn’t play

The Federal Court of Canada has granted the Subway restaurant trademark owner a permanent injunction enjoining a cannabis dispensary from using the parody trademark BUDWAY. Read more

15 Jul 2021

The importance of the proof of use in the recognition of the risk of confusion: a reminder of the fundamentals

Where genuine use has been proven in connection with some of the goods covered by the mark on which an opposition is based, the EUIPO is entitled to restrict its assessment of the likelihood of confusion to those goods alone. Read more

15 Jul 2021

Trademark prosecution in China: statistics and trends analysed

Statistics recently released by the CNIPA signal a downward trend in terms of the approval rate. In contrast, securing the cancellation or invalidation of a registered trademark has become increasingly easy in China. Read more

14 Jul 2021

Sun sets on Sunrise B as AdultBlock rises to the occasion

Sunrise B, the programme that enabled trademark holders to block their brands for a period of 10 years in the adult-themed ‘.xxx’ TLD, is set to come to an end. In its place, the ‘.xxx’ Registry is introducing two levels of protection: AdultBlock and AdultBlock+. Read more

14 Jul 2021

Foreign companies as IP holders in Ecuador

Third-party appropriation of internationally famous trademarks is a problematic phenomenon in Ecuador. Some clarification by the Court of Justice of the Andean Community would arguably be welcome. Read more

13 Jul 2021

SKY v SKYLINERS: how to prove entitlement to file an opposition as a licensee

In these opposition proceedings between Sky plc and Skyliners GmbH, the General Court considered the requirements that must be met by a licensee in order to prove that it is authorised to file an opposition on the basis of earlier EU marks. Read more

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