Legal Updates

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Today

UDRP: termination of business does not mean termination of rights in a domain name

A recent decision under the UDRP serves as a reminder that the termination of a business activity does not imply the disappearance of rights to the domain name related to such business. Read more

Today

Composite suit for design infringement and passing off is maintainable, holds Special Bench of Delhi High Court

Overruling an earlier decision of the Full Bench in a similar case, a Special Bench of the Delhi High Court has held in Carlsberg Breweries v Som Distilleries that a composite suit for design infringement and passing off may be maintained. Read more

18 Jan 2019

Restricting keyword advertising can be anti-competitive, holds the FTC

In a case concerning 1-800-Contacts’ approach to curbing competitors’ use of “1-800-Contacts” as an online search keyword, the US Federal Trade Commission has weighed in for the first time on whether restricting the use of trademark keywords is anti-competitive. Read more

18 Jan 2019

Important changes to Irish trademark law – what you should know

Important changes to Irish trademark law came into effect on 14 January 2019. This update highlights a number of key changes that trademark owners and attorneys should be aware of. Read more

17 Jan 2019

Blackhawks.com down! Respondent found to have engaged in pattern of abusive domain name registration

A recent UDRP decision involving the domain name ‘blackhawks.com’ shows that a domain name registrant may be found to engage in conduct that amounts to bad faith even if it is not targeting a specific trademark holder. Read more

17 Jan 2019

Amended German trademark law comes into force - key changes highlighted

The Trademark Law Modernisation Act, which aims to transpose Directive 2015/2436 into German law, has come into force. This update reviews the changes that will have the greatest impact on mark owners. Read more

16 Jan 2019

Sky skewers Samsung in 'Q' case

The UK Intellectual Property Office has upheld an opposition filed by Sky, the owner of a figurative mark intended to be seen as ‘Q’, against the registration by Samsung of a mark representing the letter ‘Q’. Read more

16 Jan 2019

Blow for Horlicks as Delhi High Court rules in favour of Heinz in comparative advertising case  

The Delhi High Court has dismissed Horlicks’ application for an interim injunction against Heinz India, holding that an advertiser is allowed to make a comparison with other products as long as such comparison is true. Read more

15 Jan 2019

UDRP: no change in the status quo is not a legally relevant development

A recent decision under the UDRP highlights important points for complainants contemplating the submission of a refiling. Read more

15 Jan 2019

Court of Appeal deviates from 'first to register' rule and protects foreign brand owner

In a significant victory for brand owners, Nigeria’s Court of Appeal has deviated from the ‘first to register’ rule and held that the true owner of the mark KASEA was a Chinese company which was not a party to the proceedings. Read more

14 Jan 2019

Mediation now mandatory for monetary-related IP disputes

Mediation is now mandatory in Turkey for actions relating to commercial receivables, which cover certain types of IP disputes.  Read more

14 Jan 2019

Korea Customs Service announces amendments to IP rights protection guidelines

Late last year the Korea Customs Service issued an announcement regarding important proposed amendments to the IP rights protection guidelines. This update reviews the amendments which may have the greatest impact on brand owners. Read more

11 Jan 2019

Preliminary injunctions granted against Blablatel Mobile for parallel imports

In a dispute between two mobile phone companies, the EU Trademark Court Number 1 of Alicante has confirmed that importing goods that were originally intended to be marketed outside the European Economic Area without the trademark owner's consent constitutes infringement. Read more

11 Jan 2019

Skyscanner fails to obtain transfer of ‘fly-scanner.com’ under UDRP

In a recent case under the UDRP, Skyscanner has failed to prove that the respondent had registered and used the domain name ‘fly-scanner.com’ in bad faith, even though it was being used in relation to competing services. Read more

10 Jan 2019

Eurasian Economic Union makes progress with Customs Register and Eurasian trademark

Two documents have recently been signed in order to move forward the process of establishing a unified IP system in the Eurasian Economic Union (EAEU). Among other things, EAEU trademarks are expected to become the new standard for the region sometime next year. Read more

10 Jan 2019

The red-and-white jersey belongs to all Peruvians - but not when it includes the Peruvian Football Federation’s shield

The Peruvian Trademark Office has allowed the registration of two trademarks representing the red-and-white jersey of the national football team - but only because the marks included the Peruvian Football Federation’s shield. Read more

9 Jan 2019

Federal Supreme Court: Producers must prove that Champagne does not determine taste of ‘Champagner Sorbet’

In a dispute over the use of the name ‘Champagner Sorbet’, the German Federal Supreme Court has held that the burden of proving that the ingredient Champagne does not determine the taste of ‘Champagner Sorbet’ rests on the claimant, a French association of Champagne producers. Read more

9 Jan 2019

Is Brexit spurring a ‘.eu’ domain exit?

The latest Progress Report released by EURid has revealed a drop in the overall number of registrations under ‘.eu’. Is the uncertainty surrounding Brexit a factor in the decrease in the number of domain name registrations and renewals? Read more

8 Jan 2019

UDRP complainants: be careful not to trigger a finding of reverse domain name hijacking

In recent UDRP proceedings, a panel has denied the transfer of a domain name that was identical to the complainant's mark and also made a finding of reverse domain name hijacking - even though the respondent did not specifically ask for such relief. Read more

8 Jan 2019

Spinning around: General Court annuls EUIPO decision revoking SPINNING mark

The EU General Court has annulled a EUIPO decision revoking the mark SPINNING for “exercise equipment” and “exercise training” services. The decision highlights the importance of showing consumers of goods as being both sophisticated and lay. Read more

7 Jan 2019

Turkish government introduces restrictions on use of trademarks on tobacco products

The control of tobacco consumption has long been one of the top priorities of the Turkish government. In November 2018 Law No 7151 entered into force, introducing new regulations regarding the packaging of tobacco products. Read more

7 Jan 2019

Cadbury’s colour purple mark can’t be split - clarity and precision are the winners in the Court of Appeal

In a significant blow to Cadbury, the Court of Appeal of England and Wales has rejected the confectionary giant’s argument that its trademark registration for the colour purple was actually a series mark which could be split and partially maintained. Read more

4 Jan 2019

Eagle mark soars to injunction against identical hawk logo

In Alliance for Good Government v Coalition for Better Government, the US Court of Appeals for the Fifth Circuit has considered whether there was a likelihood of confusion between two logos arranged around a stylised bird. Read more

4 Jan 2019

Singapore Treaty enters into force in Peru

The Singapore Treaty on the Law of Trademarks has entered into force in Peru. This update highlights four areas of change resulting from the coming into force of the treaty. Read more

3 Jan 2019

Myanmar adopts long-awaited Trademark Law

The long-awaited Myanmar Trademark and Geographical Indication Law was passed by the Lower House on 12 December 2018. This update reviews the most notable changes introduced by the new law. Read more

3 Jan 2019

General Court: Board of Appeal failed to sufficiently examine ownership of goodwill in The Commodores name  

The EU General Court has issued its decision in a dispute between founding members of the band The Commodores over the mark THE COMMODORES. Read more

2 Jan 2019

THINS – not all they are crackered up to be

The US Court of Appeals for the Federal Circuit has affirmed a TTAB refusal to register marks for CORN THINS and RICE THINS for snack cakes, finding that the marks were highly descriptive and had not acquired distinctiveness. Read more

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