Legal Updates

Latest

View all
10 Jul 2020

Domain name owners beware: UDRP cannot fix failure to renew

A recent case involving the domain name ‘berrysweet.com’ shows that the UDRP cannot simply be used to fix a failure to renew when all else fails, highlighting the importance of efficient portfolio management. Read more

10 Jul 2020

Blow for Marriott as court finds that cease and desist letter can trigger non-infringement suit

This decision of the Pudong New District Court in a case involving a local company and international hotel chain Marriott Worldwide Corporation has been selected as one of the top 10 IP cases of Pudong New District for 2019. Read more

9 Jul 2020

Major blow for tobacco industry as WTO Appellate Body issues decision in Australian plain packaging dispute

In a significant victory for public health, the World Trade Organisation (WTO) Appellate Body has rejected appeals lodged by the Dominican Republic and Honduras against the findings of the WTO Panel Report on Australia’s plain packaging requirements for tobacco products. Read more

9 Jul 2020

Bombay High Court considers reliefs to be granted in fake websites case

In a case involving fake websites registered by an unknown person, the Bombay High Court has considered which reliefs could be granted against domain registrars, banks and INRegistry. Read more

8 Jul 2020

Board of Appeal decision highlights difficulty of proving that mark has become generic

This decision of the Icelandic Board of Appeal emphasises the strict requirements for proving the alleged degeneration of a registered trademark under the relevant provisions of the Trademarks Act. Read more

8 Jul 2020

Beijing Higher People's Court issues new guidelines for assessment of damages in IP cases

The Guiding Opinion issued by the Beijing Higher People’s Court on 21 April 2020 should provide valuable guidance to IP rights holders when seeking damages from infringers. Read more

7 Jul 2020

Bombay High Court grants ex parte relief against defendant’s use of pharma mark

In a case involving the use of identical marks for prescription-only medicines and non-prescription products, the Bombay High Court has found that there was a clear case of trademark infringement and passing off. Read more

7 Jul 2020

Reform of the Trademark Act transposing Directive 2015/2436: key amendments and new possibilities

Following the reform of the Trademark Act (the second part of which came into effect on 20 May 2020), national trademarks may become a more attractive prospect for applicants developing their portfolio strategies. Read more

6 Jul 2020

Taiwan courts grant broad protection to foreign trademark licensor

In cancellation proceedings against the mark DADA SUPREME, the  Taiwanese courts have imposed strict criteria for the cancellation of a trademark registration based on the improper use of the mark by a local licensee. Read more

6 Jul 2020

Green with envy? Energy Beverages fails to revoke Frucor’s mark for colour green

Under threat of trademark infringement proceedings, Energy Beverages LLC has unsuccessfully challenged Frucor Suntory’s trademark registration for the colour green in New Zealand. Read more

3 Jul 2020

Just desserts for MR. WHIPPY on appeal

This decision in UK opposition proceedings suggests that genuine use may be found where the evidence relates to a precursor of the goods covered by the specification, rather than the goods themselves. Read more

3 Jul 2020

UDRP complainant cheesed off in ‘taleggio.net’ case

A WIPO panel has denied the transfer of the domain name ‘taleggio.net’ under the UDRP because the complainant, an Italian consortium promoting and commercialising Taleggio cheese, had failed to prove that the respondent had acted in bad faith. Read more

2 Jul 2020

General Court upholds Louis Vuitton’s appeal in checkerboard pattern case

This case, which involved a beige-and-blue chequerboard pattern trademark owned by French fashion house Louis Vuitton Malletier, highlights that those hoping to obtain EUTM protection by showing acquired distinctiveness will have their work cut. Read more

2 Jul 2020

In a space of their own: new second-level ‘.au’ domains

Australian third-level domains may soon be outdated due to the release of the new second-level ‘.au’ domain. This update presents key takeaway points to maximise the prospects of securing a second-level ‘.au’ domain. Read more

1 Jul 2020

International trademark registration under the Madrid System in Thailand: practical points for brand owners

With the Madrid System now in its third year in Thailand, this update identifies the practical points for brand owners to consider when deciding which channel – the Madrid System or the direct national route – is the most efficient. Read more

1 Jul 2020

Punitive damages: a powerful weapon to protect trademark rights in China?

Following a series of decisions issued in trademark infringement cases involving brands Hey Tea and TikTok, as well as an opinion of the Supreme People's Court, many believe that punitive damages will soon be commonly awarded in infringement cases in China. Read more

30 Jun 2020

Kenya’s journey towards a harmonised IP legal regime

The Intellectual Property Bill 2020 represents a significant step towards the strengthening of IP rights in Kenya. However, the bill contains gaps that threaten the practicality of the legislation. Read more

30 Jun 2020

Light beer sweetener – not so sticky after all

The US Court of Appeals for the Seventh Circuit has held that Anheuser-Busch’s statements that Molson Coors’ beers were made with corn syrup were not false and misleading under the Lanham Act. Read more

29 Jun 2020

SPC denies trademark infringement in bad-faith lawsuit against Michael Kors

The Supreme People’s Court of China has confirmed the dismissal of an infringement action filed by the owner of the MK logo against clothing company Michael Kors. The fact that the plaintiff sought to benefit from Michael Kors’ reputation led to its downfall, but some of the court’s findings seem debatable. Read more

29 Jun 2020

‘casinodaddy.com’: claim fails due to insufficient evidence of bad-faith registration

A recent case involving the domain name ‘casinodaddy.com’ highlights that UDRP complaints will usually be denied if the panel feels that the issues are too complex and better suited to more in-depth consideration by a court of law. Read more

26 Jun 2020

Merck v Merck: infringements in the digital age

The High Court has brought an end - for now - to the long-running trademark dispute between Merck KGaA and Merck Sharp & Dohme. Read more

26 Jun 2020

Impact of covid-19 pandemic on IP practice in Russia

The restrictions imposed by the Russian government in the wake of the covid-19 pandemic had some positive effects on IP practice, as Rospatent was encouraged to speed up the introduction of new online platforms encompassing all its services. Read more

25 Jun 2020

CJEU: "incorrect in law" to assess similarity of signs in light of distinctive character

This decision of the Court of Justice of the European Union shows that the reputation and distinctive character of the mark on which an opposition is based are irrelevant to the assessment of similarity. Read more

25 Jun 2020

No special test for short marks, says the appointed person

This decision highlights that all marks, irrespective of their number of letters, are subject to the well-established principles for the assessment of the visual, aural and conceptual similarities. Read more

24 Jun 2020

New Trademarks Journal published amid covid-19 lockdown

Following the easing of the lockdown restrictions in certain parts of Nigeria, the Trademarks Registry published its latest Trademarks Journal on 29 May 2020. Despite this achievement, the covid-19 pandemic has underscored the urgency of fully embracing the electronic system. Read more

24 Jun 2020

General Court provides guidance on assessment of evidence of genuine use

The EU General Court has provided important guidance on the evaluation of the proof of genuine use of a mark in opposition proceedings involving clothing company Diesel and sporting equipment and apparel retailer Sprinter. Read more

23 Jun 2020

Impact of covid-19 pandemic on industrial property field in Brazil

The latest statistics released by Brazil’s Patent and Trademark Office show a drop in the number of patent, trademark and industrial designs applications. In contrast, there has been a sharp increase in the number of cases involving counterfeit medicines in the first months of 2020. Read more

View all