Legal Updates

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21 Nov 2019

‘Exact match’ UDRP complaint denied as complainant fails to prove knowledge of its mark

The decision in MiWay Insurance Limited v Domains By Proxy LLC/Sahi highlights the difficulties in proving registration in bad faith of a passively-held domain name under the UDRP. Read more

21 Nov 2019

LIVINGDREAMS mark put to bed on appeal

The appointed person has upheld a decision of the UKIPO finding that there was a likelihood of confusion between the figurative mark LIVINGDREAMS in Class 20 and earlier marks consisting of, or containing, the word ‘dreams’ in Classes 20, 24 and 35. Read more

20 Nov 2019

Foreign equivalent of geographical name may be registered if average public would not understand its meaning

In a victory for the Czech car manufacturer, the Re-examination and Evaluation Board has upheld Škoda Auto AS’s appeal against a decision of the Turkish Trademark and Patent Office refusing to register the mark SUEDIA for automobiles.   Read more

20 Nov 2019

Benelux Court of Justice considers whether work of art may contain well-known trademark

In a case involving paintings by Belgian artist Cedric Peers, in which he depicted bottles using the well-known shape and label of Dom Pérignon champagne, the Benelux Court of Justice has considered the freedom of artists to use trademarks in their work. Read more

19 Nov 2019

Proving bad faith at registration time could be a good ‘Techtrend’

Stressing that bad faith had to exist at the time of registration, a UDRP panel has refused to transfer the domain name ‘techtrends.com’ to the owner of the mark TECHTRENDS. Read more

19 Nov 2019

Bent(ley) out of shape in trademark dispute

In Bentley 1962 Ltd v Bentley Motors Ltd, the High Court of England and Wales has found that Bentley Motors, the well-known manufacturer of luxury vehicles, had infringed trademarks belonging to a small UK-based clothing company.  Read more

18 Nov 2019

Make My Trip v Make My Travel: Delhi High Court reaffirms conditions to avail of defence of acquiescence

The High Court of Delhi has reaffirmed that the trademark holder’s express consent to the use of a similar/identical trademark is an essential requirement to avail of the defence of acquiescence under Section 33 of the Trademark Act. Read more

18 Nov 2019

General Court confirms that figurative mark is descriptive

In United States Seafoods LLC v EUIPO, the EU General Court has confirmed that the mark UNITED STATES SEAFOODS, with a design resembling the US flag cropped into the shape of a territory, was descriptive. Read more

15 Nov 2019

Owners of enjoined company personally liable for monkeying around with injunction

A recent decision of the US Court of Appeals for the 11th Circuit shows that a party that has been enjoined from using a trademark should immediately implement a thorough strategy to halt all use of the infringing mark by both itself and its distributors and vendors. Read more

15 Nov 2019

New INPI resolutions on trademark applications and nullity/cancellation actions – what you need to know

Argentina’s National Institute of Industrial Property has passed two new resolutions that will have a significant impact on trademark owners and practitioners. Read more

14 Nov 2019

‘grabprinting.com’ decision: UDRP panels will want snapshot of circumstances at time when domain name was registered

The decision in Grabtaxi Holdings Pte Ltd v Lim serves as a reminder that UDRP panels will pay close attention to the situation at the time when the domain name is registered. Read more

14 Nov 2019

General Court provides guidance on proof of enhanced distinctiveness

In EI Papadopoulos SA v EUIPO, the EU General Court has provided guidance regarding the assessment of evidence intended to show the enhanced distinctiveness of a mark. Read more

13 Nov 2019

New rules on foreign-language trademarks cause confusion

Presidential Regulation 63/2019 recently provided more specificity concerning the mandatory use of Indonesian language in certain contexts under Law 24/2009. However, the effects for Indonesian businesses and brands may be huge. Read more

13 Nov 2019

General Court: Board of Appeal incorrectly interpreted specification of earlier trademarks

The EU General Court has held that, when interpreting the specification of an earlier mark, it is the interpretation which, among a number of possible interpretations of EU legal instruments, is the one which does not lead to an absurd result that must be preferred. Read more

12 Nov 2019

In the pink: lack of personal jurisdiction results in dismissal of non-infringement verdict

In C5 Med Werks v CeramTec GmBH, the US Court of Appeals for the 10th Circuit has reversed a Colorado district court’s bench trial verdict, finding that the district court lacked specific personal jurisdiction over defendant CeramTec. Read more

12 Nov 2019

OEM for export: Supreme People’s Court expands definition of ‘relevant public’ in HONDAKIT case

In Honda Motor Co Ltd v Chongqing Hengsheng Xintai Trading Co Ltd, the Supreme People’s Court of China has, for the first time, defined the ‘relevant public’ in OEM cases as including all operators and consumers that may have access to OEM goods for export. Read more

11 Nov 2019

When "sweet water" becomes bitter

A three-member panel has denied the transfer of a domain name consisting of the Spanish generic term ‘agua dulce’ (‘sweet water’ or ‘fresh water’ in English) under the UDRP due to the lack of sufficient evidence supporting the targeting of the complainant’s trademark. Read more

11 Nov 2019

CJEU refuses to hear appeal in trademark case under new rules

In Wirecard Technologies Gmbh v EUIPO, the Court of Justice of the European Union has decided for the first time that an appeal in a trademark case was inadmissible under new rules that came into force in May 2019. Read more

8 Nov 2019

Are international trademark registrations valid in Zambia?

The recent judgment of the Zambian registrar of trademarks in Sigma-Tau Industrie Farmaceutiche Riunite v Amina Limited deals with the vexed question of whether international registrations are actually valid in Zambia. Read more

8 Nov 2019

ISIPO considers 'legitimate interests' condition under Article 30(a) of the Trademarks Act

The Icelandic Intellectual Property Office has dismissed a claim for the cancellation of the mark LJÓSLEIÐARINN on the ground that the claimant had not met the ‘legitimate interests’ condition under Article 30(a) of the Trademarks Act. Read more

7 Nov 2019

Patent and Market Court confirms likelihood of confusion between JOHN WHITE and JTI's JOHN SILVER for cigarettes

The Swedish Patent and Market Court has upheld a decision of the Patent and Registration Office finding that there was a likelihood of confusion between Diamond Quest’s JOHN WHITE mark and JTI’s earlier JOHN SILVER marks for cigarettes. Read more

7 Nov 2019

General Court confirms likelihood of confusion between figurative mark NUME and word mark NUMEDERM

The EU General Court has upheld a decision of the Fifth Board of Appeal of the EUIPO finding that there was a likelihood of confusion between the figurative mark NUME and the earlier word mark NUMEDERM for certain goods in Classes 5, 29 and 30. Read more

6 Nov 2019

Harvard Club of Singapore fails to prevent Harvard University from registering HARVARD marks

Harvard University and its former alumni organisation in Singapore have recently clashed in trademark opposition proceedings before the Intellectual Property Office of Singapore. Read more

6 Nov 2019

High Court dismisses Glaxo's passing-off claim for competitor's use of the colour purple

The decision of the High Court of England & Wales in Glaxo Wellcome UK Ltd v Sandoz Ltd reaffirms the well-established principles of the tort of passing off and the difficulties of proving goodwill in a colour. Read more

5 Nov 2019

TREBOL case: notoriety as a defence in non-use cancellation actions

Peru’s Administrative Court of Appeals has dismissed an action for the cancellation of the mark TREBOL in Class 1 due to non-use, as the owner had demonstrated that the mark was a variation of the well-known figurative trademark TREBOL in Class 11.   Read more

5 Nov 2019

General Court attempts to solve Rubik’s Cube puzzle

In Rubik’s Brand Ltd v EUIPO, the EU General Court has confirmed the cancellation of an EU trademark consisting of the shape of the well-known Rubik’s Cube puzzle in the latest decision in the long-running battle between Rubik’s Brand and Simba Toys. Read more

4 Nov 2019

Criminal sentence handed down for possession of infringing FC Barcelona t-shirts

The Madrid Court of Appeal has upheld a lower court decision sentencing the defendant to five months’ imprisonment for possessing 9,317 counterfeit items of clothing for commercial purposes, including t-shirts infringing the IP rights of FC Barcelona. Read more

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