Legal Updates

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24 Nov 2020

CJEU gives first ruling on Article 8(3) of Regulation 2017/1001

This decision of the Court of Justice of the European Union should provide some comfort to trademark owners as to the extent of protection of their marks when faced with misuse and unconsented EUTM applications by an agent/representative. Read more

24 Nov 2020

Upcoming improvements to Uzbekistan’s IP rights protection system: what you need to know

The president of Uzbekistan has recently announced various measures aiming to improve the system of IP rights protection in the country - including an initiative intended to protect well-known international brands against copycat applications. Read more

23 Nov 2020

Sticky situation? Circumstantial evidence can support intent to confuse in trade dress claims

This decision of the US Court of Appeals for the 11th Circuit shows that a party seeking to protect its trade dress should try to show not just intentional copying, but intentional copying with the intent to confuse consumers about a product’s origins. Read more

23 Nov 2020

Appeal court finds no likelihood of confusion between TREK and OUTTREK

This decision of the Danish Eastern High Court underlines the importance of determining the relevant public correctly. Read more

20 Nov 2020

Stricter penalties introduced for most serious IP infringement cases

Stricter penalties for the most serious cases of IP infringement have entered into force in Sweden, increasing the range of punishment to imprisonment for a maximum of six years. Read more

20 Nov 2020

UMBRA SHEER held to be descriptive for Class 3 goods

This decision of the Swiss Federal Administrative Court highlights that English is commonly understood in Switzerland and that only lesser-used words will be deemed not to be known by the public. Read more

19 Nov 2020

WICKED v WICKED SISTER: Federal Court considers issues of deceptive similarity, ownership and removal

There was no sweet victory before the Federal Court of Australia for the owners of the WICKED SISTER mark, used mostly for dairy desserts, in their attempt to prevent use of the WICKED mark for dipping sauces and related products. Read more

19 Nov 2020

‘Back-up’ application filed to circumvent use requirement deemed to have been made in bad faith

This decision is significant in that it reveals the attitude of the Turkish Patent and Trademark Office towards ‘back-up’ trademark applications. Read more

18 Nov 2020

TARGET VENTURES case: Board of Appeal erred in finding that application was not filed in bad faith

In a decision that provides a useful review of the criteria for assessing whether an application has been filed in bad faith, the General Court has annulled a decision of the EUIPO rejecting an application for a declaration of invalidity of the mark TARGET VENTURES. Read more

18 Nov 2020

Likelihood of confusion: the business field of the parties is key

Over the past few years, Argentina’s courts have developed a new practice for the assessment of the likelihood of confusion between two trademarks registered in the same class, as demonstrated by the recent decision in Assa Abloy AB v Alvarez. Read more

17 Nov 2020

Times Now secures injunction against use of NEWSHOUR mark by ex-employee’s TV channel

The Delhi High Court granted Times Now’s request for an interim order restraining rival network Republic TV from using the mark NEWSHOUR, but did not interfere with Republic TV’s use of a mark coined by a former Times Now employee. Read more

17 Nov 2020

Armenia, Azerbaijan and Kyrgyzstan ratify protocol on Eurasian design patents

The protocol, which was adopted by Eurasian Patent Organisation member states in September 2019, introduces the Eurasian system for the protection of industrial design patents. Read more

16 Nov 2020

Good news for Ferrari as CJEU rules that use of mark for second-hand car sales may be sufficient to constitute genuine use

In a decision that will be welcomed by trademark owners, the Court of Justice of the European Union has held that use of Ferrari’s TESTAROSSA mark for spare parts and second-hand vehicles may be sufficient to constitute genuine use of the mark. Read more

16 Nov 2020

SPROUTS v SPROUT: trademark cancellation is appropriate sanction for misconduct

The US Court of Appeals for the Federal Circuit has affirmed the TTAB’s express authority to impose the cancellation of a trademark by default judgment as a sanction in a TTAB proceeding. Read more

13 Nov 2020

NAPAPIJRI position mark protected by Brussels court

VF International, the owner of the NAPAPIJRI position mark for premium winter jackets, has prevailed in a dispute over the use of the figurative mark NORTH VALLEY in a similar position on winter jackets. Read more

13 Nov 2020

Mrs Jello obtains RDNH finding in ‘spase.com’ case

This case illustrates that UDRP complainants must convincingly establish a respondent's lack of legitimate rights or interests and bad faith, especially when the domain name registration substantially pre-dates the complainant’s supposed trademark rights. Read more

12 Nov 2020

FRIGIDAIRE: General Court casts a chill on the notion of genuine use

This decision of the EU General Court in an action for the revocation of Electrolux’s mark FRIGIDAIRE is a further reminder of the difficulty of quantifying and assessing the nature of genuine use. Read more

12 Nov 2020

Competition watchdog launches register of IP rights infringers

In order to raise awareness of the potential liabilities associated with manufacturing IP-infringing products, Uzbekistan’s competition watchdog has launched a register of businesses found liable for unfair competition practices involving IP rights infringement in 2020. Read more

11 Nov 2020

A new era for domain names under the ‘.tr’ extension

Turkey will soon have a new system for registering and regulating ‘.tr’ domain names. Among many other changes, the ‘.tr’ Network Information System - or TRABIS - allows domain name sales transactions and it will be possible to use dispute resolution service providers. Read more

11 Nov 2020

Nike victorious in long-running criminal trial against counterfeiters

This decision of the Peruvian Criminal Court may provide a precedent for the acceptance of technical reports and affidavits filed by the aggrieved parties’ ex parte experts in future trials. Read more

10 Nov 2020

Film titles - trademarks or not trademarks?

The recent decision of the Australian Trademarks Office in a case involving a film called Lion again discusses the issue of whether a film title may function as a trademark. Read more

10 Nov 2020

Improvements to Indonesia’s IP regime amidst covid-19 outbreak boost trademark applications

The Directorate General of Intellectual Property has taken progressive steps to accommodate the needs of IP owners during the covid-19 outbreak, resulting in a higher volume of registrations. Read more

9 Nov 2020

Defeat for Apple as Borgarting Appellate Court confirms cancellation of SHERLOCK mark

This decision of the Borgarting Appellate Court illustrates that not every type of commercial use will be sufficient to meet the use requirement in Norway. Read more

9 Nov 2020

New rules for the resolution of administrative disputes in Russia: key points for rights owners and practitioners

The new “Rules for Consideration and Resolution of Administrative Disputes by the Federal Service for Intellectual Property”, which entered into force on 6 September 2020, may lead IP rights owners to reconsider their defence strategies in Russia. Read more

6 Nov 2020

General Court confirms lack of likelihood of confusion between DECATHLON and ATHLON

This decision of the EU General Court shows that, where two trademarks have a weakly distinctive element in common, the impact of such similarity on the global assessment of the likelihood of confusion will be low. Read more

6 Nov 2020

The wish is father to the thought

This recent decision demonstrates that UDRP complainants should not refrain from conducting due diligence on the registrant’s details before filing a complaint. Read more

5 Nov 2020

SMART:)THINGS: a smile does not wipe away descriptiveness

The EU General Court has confirmed that the emoticon ‘:)’ was devoid of any distinctive character and, therefore, could not divert the relevant public’s attention from the descriptive message conveyed by the word elements ‘smart’ and ‘things’. Read more

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