Legal Updates

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17 Sep 2021

Applications to register names of Chinese Olympic champions rejected ex officio

The Chinese Olympic Committee recently publicly reprimanded trademark squatters for attempting to register the personal names of Chinese Olympic champions. Spurred by the committee’s comments, the CNIPA rejected ex officio a large number of trademark applications for the names of Chinese athletes. Read more

17 Sep 2021

Parallel imports in Venezuela: international trademark owners beware

Although Venezuela has not been seen as a priority by many international companies when it comes to trademark protection, this could change as a result of measures implemented by the Venezuelan government to stimulate imports. Read more

16 Sep 2021

Partial design applications becoming more popular in South Korea

The steady increase in applications over the past 10 years (particularly by major domestic and foreign companies) suggests that the partial design system has been a useful tool for companies seeking to strengthen their design competitiveness. Read more

16 Sep 2021

Lanham Act reaches foreign defendants’ extraterritorial conduct, but worldwide injunction too broad

In this dispute between a US remote control manufacturer and its former distributors, the US Court of Appeals for the 10th Circuit has considered the extraterritorial reach of the Lanham Act. Read more

15 Sep 2021

Bad news for Sony as General Court confirms that VITA mark was not put to genuine use

This decision of the General Court offers insight into whether use of a trademark for gaming consoles would constitute use for “data carriers containing programs” and “audio and/or image carriers (not of paper)”. Read more

15 Sep 2021

Not everyone on the Internet uses aliases

This UDRP decision highlights how having a trademark does not necessarily mean that a rights holder will succeed in obtaining the transfer of a domain name, even if it is identical to that trademark and even if the respondent does not reply to the complaint. Read more

14 Sep 2021

Caterpillar v Puma: battle of the big cats

The Federal Court of Australia has refused the registration of sporting company Puma’s PROCAT mark, concluding that its use would be likely to cause confusion with heavy equipment manufacturer Caterpillar’s CAT mark. Read more

14 Sep 2021

New measures for e-commerce supervision come into force

The Measures for the Supervision and Administration of Online Transactions have recently come into effect in China, strengthening the pressure against operators of infringing online stores. Read more

13 Sep 2021

Blow for Sony in GT RACING case

Sony has failed in its attempt to prevent the registration of GT RACING based on its GT and GRAN TURISMO marks, which it uses for its popular Gran Turismo video game. Read more

13 Sep 2021

SANTA CRUZ – a city, place, ship, given name or the Spanish for ‘holy cross’?

This decision of the Borgarting Court of Appeal highlights that, in the assessment of distinctive character, one must not confer greater geographical knowledge to the average consumer than there is basis for. Read more

10 Sep 2021

General Court’s (e)message is loud and clear on law and practice applicable to invalidity assessment

The decision of the General Court in this dispute between Apple and e*Message over the validity of the mark E*MESSAGE underlines the continuity and retroactivity of EU legislation and case law. Read more

10 Sep 2021

Texas Hammer nails trademark infringement appeal

This case presented the first opportunity for the US Court of Appeals for the Fifth Circuit to consider initial interest confusion in the context of search engine keyword advertising. Read more

9 Sep 2021

WICKED v WICKED SISTER: Full Court confirms no statutory infringement by a party that has not used, but has authorised use of, a trademark

Australia’s Full Federal Court has confirmed that a trademark owner that merely authorises use of its trademark cannot be subject to liability for direct trademark infringement. Read more

9 Sep 2021

Huge raid carried out against clandestine workshop of counterfeit H&S shampoo

The biggest action of the year so far in relation to an IP and public health crime has recently taken place against a clandestine factory in which fake Head & Shoulder goods were produced. Read more

8 Sep 2021

Stricter WHOIS rules come into force in Denmark

While ICANN has relaxed WHOIS information requirements due to perceived issues with the GDPR, Denmark has recently made the consequences of not keeping contact information up-to-date harsher for registrants of ‘.dk’ domain names. Read more

8 Sep 2021

Kazakhstan to introduce mandatory digital labelling of footwear

The mandatory digital labelling of footwear is to be introduced in Kazakhstan on 1 November 2021 in a bid to minimise the presence of counterfeit footwear in the country, which currently makes up 48.5% of the local footwear market. Read more

7 Sep 2021

Stihl successfully invalidates infringer’s colour combination mark

Andreas Stihl, which owns a trademark for an ‘orange and grey’ colour combination for “chainsaws”, has obtained the invalidation of a trademark consisting of the colours orange, milk white and black for goods in Class 7. Read more

7 Sep 2021

Delhi High Court: adoption of ‘Delhi Public School’ marks by purported “permitted users” prima facie invalid

The Delhi Public School Society has been granted an injunction for the second time in a dispute over the use of the words ‘Delhi Public School’ and a crest logo. Read more

6 Sep 2021

Third Circuit orders second look at delays and disgorgement of profits

In a long-running dispute between two charitable organisations over the use of the marks CARS FOR KIDS/KARS 4 KIDS, the US Court of Appeals for the Third Circuit has vacated a disgorgement order totalling about $10.6 million. Read more

6 Sep 2021

High Court allows two ‘Luke’s’ restaurants to co-exist

In this dispute between rival Singapore restaurants, the High Court has decided that the parties’ respective marks and businesses could co-exist, without the relevant public being confused. Read more

3 Sep 2021

Community design representing a torch wick holder upheld - but no infringement found

This decision of the Danish Maritime and Commercial High Court highlights that defining the ‘informed user’ of a design is crucial in both invalidity and infringement claims. Read more

3 Sep 2021

Higher Board decides in favour of UGG based on well-known trademark status and principle of interdependence

Deckers Outdoor Corporation, the owner of the UGG mark, has prevailed in an opposition against the registration of the trademark UGG WATCH, winning on the basis of a likelihood of confusion despite substantial differences between the products. Read more

2 Sep 2021

CNIPA issues draft standards for determining illegal trademark conduct

The China National Intellectual Property Administration has issued draft standards for determining general trademark violations, with the aim of strengthening the administration of trademark use and unifying enforcement standards. Read more

2 Sep 2021

Caught red handed: raid on Epson ink and HP toner counterfeiters results in big win for IP rights holders

A police raid has led to a significant seizure of goods and three arrests. The subsequent court hearing resulted in two sentences and a plea bargain that delivered high compensation for the IP rights holders. Read more

1 Sep 2021

The BIBBY case: bad faith and bad karma

Samsung has prevailed in a dispute with EBB Development, owned by notorious trademark filer Michael Gleissner, with the Court of Appeal of the Hague ruling that EBB had acted in bad faith when applying for the Benelux trademark BIBBY. Read more

1 Sep 2021

Manuka honey clarified in trademark opposition

The New Zealand body representing a group of ‘manuka’ honey producers has failed to prevent an Australian producer from registering a trademark containing the words ‘Australian manuka’ for honey. Read more

31 Aug 2021

Chilean Congress finally approves Madrid Protocol after government push

After 20 years of toing and froing, the Chilean Congress has finally approved the Madrid Protocol. It is now expected that Chile could ratify the protocol with WIPO by December. Read more

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