Legal Updates

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21 Sep 2018

Success for Apple as General Court finds certain degree of similarity between APO and APPLE marks

In a victory for Apple Inc, the EU General Court has annulled a decision of the Fourth Board of Appeal of the EUIPO in which the latter had found that the figurative mark APO was not similar to Apple’s earlier marks. Read more

21 Sep 2018

New design registration regime: what you need to know 

The new Israeli Design Law recently came into effect, and the Ministry of Justice subsequently published draft new Design Regulations. This update reviews the key points concerning the filing, examination and registration process. Read more

20 Sep 2018

Bad news for tourism and souvenir industry as CJEU rules that castle name can be registered as trademark

In a ruling that sits uncomfortably with its earlier decision in Windsurfing Chiemsee, the Court of Justice of the European Union has rejected the notion that the name of a famous Bavarian castle could serve as a geographic indication for the relevant goods/services.  Read more

20 Sep 2018

Tread lightly: tyre company’s use of competitor’s mould is reverse passing off

In a case involving sellers of industrial tyres, the US Court of Appeals for the Ninth Circuit has confirmed that the defendant’s use of a competitor’s tyre mould to make its own tyres created a likelihood of confusion. Read more

19 Sep 2018

Delhi High Court: defendants copied all main features of Marico’s PARACHUTE-branded product

In Marico Limited v Kumar, the Delhi High Court has restrained the defendants from infringing Marico Limited’s IP rights in its PARACHUTE-branded coconut oil. Read more

19 Sep 2018

Eurasian Economic Commission updates recommendations on inclusion of licence fees in customs value of imported goods

The Eurasian Economic Commission has updated the recommendations of the Eurasian Economic Union on the treatment of licence fees for the purpose of customs valuation on the territory of the Eurasian Economic Union. Read more

18 Sep 2018

Federal Court once again affirms that "use" of a trademark does not require bricks and mortar for non-Canadian businesses  

In Hilton Worldwide v Miller Thomson, the Federal Court of Canada has held that providing “hotel services” does not require a physical hotel in Canada to constitute “use” of a trademark in the country. Read more

18 Sep 2018

Kazakhstan amends IP legislation - key changes highlighted

Various amendments to the IP legislation have come into force in Kazakhstan. This update highlights the most significant changes brought about by the amendments. Read more

17 Sep 2018

A monster left licking its wounds: Monster Energy suffers three opposition losses

Energy drink giant Monster Energy has been involved in three trademark oppositions in New Zealand so far this year, and was unsuccessful in all three. Read more

17 Sep 2018

New rules for non-use cancellation actions: what you need to know

The Brazilian Patent and Trademark Office has issued Technical Note No 01/2018, which establishes new rules for non-use cancellation actions. This update highlights the key points for mark owners and petitioners. Read more

14 Sep 2018

Panasonic wins passing-off case concerning packaging and product designs

In a landmark decision, the Thai Supreme Court has held that the defendant was passing off its batteries as those of Panasonic, even though it sold its products under a different trademark. Read more

14 Sep 2018

UDRP complainants beware: panel may conduct further research

A recent decision under the UDRP highlights that complainants should carefully carry out research and consider the evidence they provide to satisfy the second and third requirements of the UDRP, as the panel may conduct further research. Read more

13 Sep 2018

Massimo Osti v Global Design: should a claim be issued in the IPEC or the High Court?  

The decision in Massimo Osti v Global Design shows that the choice of bringing a case in the Intellectual Property Enterprise Court or the High Court of England and Wales is not always within the control of the claimant. Read more

13 Sep 2018

IP office gets new name and undergoes structural changes - what you need to know

Vietnam’s Ministry of Science and Technology has issued a new Regulation on the Organisation and Operation of the National Office of Intellectual Property, which introduced a new name for the office and unveiled a new organisational structure. Read more

12 Sep 2018

Big ticket win for respondent in ‘ticketcompare.com’ case

A WIPO panel has denied the transfer of a precious ‘.com’ domain name consisting of a generic term under the UDRP, and made a finding of reverse domain name hijacking against the complainant. Read more

12 Sep 2018

New incentives for registration of collective trademarks – government hoping to boost competitiveness

Starting on 5 September 2018, and for a duration of one year, certain communities, organisations and businesses will be exonerated from the payment of the official fee for the registration of collective marks in Peru. Read more

11 Sep 2018

AUTOKEY marks found to have acquired secondary meaning as badge of origin

The Irish controller for patents, designs and trademarks has found that, although two AUTOKEY marks were liable to be refused under two different sections of the Trademarks Act, the marks had acquired distinctiveness through use. Read more

11 Sep 2018

Why UDRP complainants should never overstate their case

A recent decision under the UDRP shows that it is crucial to provide the necessary evidence to support the submissions in the complaint and never to overstate one's case. Read more

10 Sep 2018

Victory for mark owners as CJEU rules that they can prevent de-branding of imported goods

In Mitsubishi Shoji Kaisha Ltd v Duma Forklifts NV, the Court of Justice of the European Union has considered the issue of de-branding and re-branding of goods imported into the European Union. Read more

10 Sep 2018

Supreme Court ends long-running debate: grace period from Association Agreement directly applicable in Ukraine

Ukraine’s Supreme Court has upheld decisions of the lower courts finding that the EU-Ukraine Association Agreement - which provides for a five-year non-use grace period, as opposed to three years under the national law - applied with direct effect. Read more

7 Sep 2018

CJEU offers valuable guidance for respondents to tenders involving trademarks

The Court of Justice of the European Union has delivered a ruling on what stage of the procurement process bidders must demonstrate compliance with the technical specifications of a tender. Read more

7 Sep 2018

Letter marks: Supreme Court provides guidance on distinctiveness

The Thai Supreme Court has held that a figurative mark consisting of the letters ‘B’, ‘F’ and ‘t’ was sufficiently distinctive to be registrable under the Trademark Act.  Read more

6 Sep 2018

Ninth Circuit reaffirms laches as an equitable defence in trademark cancellation actions

In Cosmetic Warriors v Pinkette Clothing, the US Court of Appeals for the Ninth Circuit has addressed the availability of laches in trademark infringement and cancellation actions under the Lanham Act.  Read more

6 Sep 2018

IPOS dismisses adidas opposition on lack of similarity in basic geometric shapes

The IP Office of Singapore has rejected adidas’ opposition against a device mark on multiple grounds, holding that adidas’ earlier mark had only a normal level of inherent technical distinctiveness.   Read more

5 Sep 2018

Frank Industries v Nike: IPEC takes modern approach to assessment of consumer perception

In Frank Industries Pty Ltd v Nike Retail BV, the Intellectual Property Enterprise Court in London has found that Nike had infringed Frank Industries' trademark registrations for LNDR by using the sign LDNR in an advertising campaign. Read more

5 Sep 2018

Supreme Court rules that AMERICAN UNIVERSITY trademark is inherently distinctive

In a notable decision, Korea’s Supreme Court has ruled that the mark AMERICAN UNIVERSITY was sufficiently distinctive among South Korean consumers to be registered in connection with university education services. Read more

4 Sep 2018

When your business address is a trademark: description of historical location is fair use  

In a decision which clarified the application of the Lanham Act’s fair use defence, the US Court of Appeals for the Sixth Circuit has held that a name or term can be used in a descriptive or geographic sense if done in good faith Read more

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