Legal Updates

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Today

UDRP respondent establishes prior registration based on unbroken chain of possession

A decision under the Uniform Domain Name Dispute Resolution Policy illustrates how a respondent may rely on an unbroken chain of ownership of a disputed domain name to establish its original registration/acquisition date.  Read more

Today

Polo logo appeal dismissed: the importance of evidence of use and registrations

The EUIPO Board of Appeal has decided that a declaration of invalidity filed by Style & Taste against Polo/Lauren’s polo logo did not contain sufficient evidence to support the claim. Read more

22 Mar 2019

Review your IP arrangements: IP exemption from competition laws soon to be repealed

Section 51(3) of the Australian Competition and Consumer Act, which exempts conditional licensing or assignment of IP rights from most of the prohibitions on cartel conduct, is due to be repealed. Businesses are strongly urged to review their IP arrangements to ensure that they comply with the competition laws. Read more

22 Mar 2019

General Court upholds rejection of STREAMS trademark application

In DeepMind Technologies Ltd v EUIPO, the EU General Court has confirmed that the mark STREAMS was descriptive of goods and services in Classes 9 and 42 and should be refused under Article 7(1)(c) of EU Regulation 207/2009.  Read more

21 Mar 2019

UDRP: be aware of generic terms

A recent decision under the UDRP highlights that having a trademark, by itself, does not necessarily mean that the trademark holder will succeed in obtaining the transfer of a domain name, even if it identically reproduces such trademark. Read more

21 Mar 2019

General Court: consumers perceive signs as a whole

The EU General Court has dismissed an appeal of the Fifth Board of Appeals’ decision concerning the EU mark VERA GREEN and earlier LAVERA marks. The court held that consumers generally perceive signs as a whole and do not analyse their various details. Read more

20 Mar 2019

Patent Office rejects WHEN IN ICELAND opposition

A recent Icelandic Patent Office decision serves as a useful reminder that the evaluation of similarity as set out in the Trademarks Act should always involve a nuanced comparison of the marks. Read more

20 Mar 2019

Philip Morris protects IQOS with registered Community design

In a powerful blow to a Chinese competitor, Philip Morris has deployed its registered Community design (RCD) in order to block the sale of a heated tobacco device, obtaining interim pan-EU injunctive relief from the UK court. The case shows that, in the right circumstances, an RCD can be used to obtain pan-EU injunctive relief on an urgent basis and is therefore an effective weapon for tackling look-a-like products. Read more

19 Mar 2019

Trademark owner’s fate sealed after finding of fraud on USPTO

The US Court of Appeals for the Eighth Circuit has upheld a ruling that dismissed a trademark owner’s second infringement lawsuit after a finding that the mark at issue was no longer incontestable because of fraud on the USPTO. This decision could end the 20-year dispute between the two brands. Read more

19 Mar 2019

‘Funtime’ is over for Trespass

The Intellectual Property Enterprise Court has held that Luen Fat Metal & Plastic Manufactory Co Limited’s UK and EU trademarks for a series of word marks (FUNTIME, FUN TIME and FUN-TIME) are valid and have been infringed. Read more

18 Mar 2019

New Intellectual Property National Policy to create more competitive and innovative nation

The National Institute for Defence against Unfair Competition and Intellectual Property has begun work on a national policy to make intellectual property a necessary competitive instrument for Peru’s social and economic development. Read more

18 Mar 2019

Trademark owners take note: marks registered under old IP law must be renewed before 28 July 2019

Trademark owners with registrations in Burundi which were filed before the new IP Law came into force are advised to apply for the renewal of their trademarks before the deadline of 28 July 2019. Read more

15 Mar 2019

Chicago Mercantile Exchange v Intercontinental Exchange: exclusively descriptive names are not registrable trademarks

A recent decision of the IP Office of Singapore in invalidity proceedings illustrates that, even if a party is the sole provider of a particular product or service, it does not automatically acquire the right to register the mark covering that product or service. Read more

15 Mar 2019

OAPI announces significant changes to the system

The African Intellectual Property Organisation authorities have announced significant changes to the legislation that underpins the OAPI system, the Bangui Agreement. Read more

14 Mar 2019

Imprisonment for breaching injunctions is annulled by Constitutional Court

Turkey’s Constitutional Court has annulled the first sentence of Article 398(1) of the Code of Civil Procedure, which deals with disciplinary imprisonment for acting against a preliminary injunction. Read more

14 Mar 2019

CJEU considers trademarks with common element 'so' and finds likelihood of confusion

When is a single common element sufficient to create a likelihood of confusion? A decision of the Court of Justice of the European Union in a case involving the mark SO’BIO ĒTIC and earlier SO…? marks illustrates the difficulties in answering that question. Read more

12 Mar 2019

Injunction granted for colour mark even though shape is different

A tribunal has granted Nestlé’s request for injunctive measures over a competitor’s packaging, which uses a similar shade of green to its registered colour mark. This was despite the fact that colour marks in Colombia are limited to particular shapes. Read more

12 Mar 2019

Supreme People’s Court clarifies that there is no such thing as registration extension

The Supreme People’s Court has affirmed that the goodwill built up by a market player may be shifted among or extended to a variety of carriers; however, there is no alternative form of trademark extension other than trademark renewal. Read more

12 Mar 2019

KIPO amends trademark examination guidelines – key changes highlighted

The Korean Intellectual Property Office has amended its trademark examination guidelines, effective as of 1 January 2019. This update reviews the main points of interest for trademark owners and applicants. Read more

12 Mar 2019

Russian IP Court confirms invalidation of BBC’s TOP GEAR mark

In a controversial decision, the Russian IP Court has upheld a Patent and Trademark Office decision which found the British Broadcasting Corporation’s TOP GEAR trademark to be invalid based on the existence of a senior, almost identical mark belonging to a third party. Read more

11 Mar 2019

China looking to hold accountable not only trademark squatters, but also facilitating agents

The recent publication of a discussion paper seems to signal a stricter approach by the IP authorities to tackle the problem of parties taking unfair advantage of the system in China at the expense of genuine rights holders.    Read more

11 Mar 2019

Blow for Apple as General Court finds that one cannot compare apples with pears

In a blow to US tech giant Apple Inc, the EU General Court has annulled a decision of the EUIPO in which the latter had upheld Apple’s opposition against the registration of the figurative mark PEAR for information and communications technology-related goods and services based on its famous apple logo mark. Read more

8 Mar 2019

New Uzbekistan resolution aims to strengthen enforcement efforts

The Uzbek government has signed a resolution to tackle the urgent issue of trademark squatting of global brands. The resolution makes significant changes to how trademarks are registered and protected in the country. Read more

8 Mar 2019

Victory for Tambrands Inc as third party’s attempt to register TAMPAX mark fails  

The Appeal Division of the Lithuanian State Patent Bureau has upheld an opposition filed by Tambrands Inc, the owner of the TAMPAX mark, against the registration of the mark TAMPAX by a natural person. Read more

7 Mar 2019

New trademark law enters into force - what you need to know

A new Law on Trademarks, which aims to transpose Directive 2015/2436 into the national legislation, entered into force in Croatia on 15 February 2019. This update highlights the key changes for trademarks owners and applicants. Read more

7 Mar 2019

Chinese court rules in favour of cognac house in 3D trademark infringement case

A Chinese court has ruled in favour of Martell, the oldest of the great cognac houses, in a case involving the infringement of Martell’s 3D trademark for the shape of its Martell XO cognac bottle. Read more

6 Mar 2019

Court of Appeal considers registration on basis of honest concurrent use or special circumstances

In a somewhat surprising decision, the Zambian Court of Appeal has held that the US Polo Association was entitled to register a polo player mark in Classes 18 and 25 in the face of an earlier polo player mark in the same classes, finding that there were “special circumstances” that warranted registration. Read more

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