Legal Updates

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16 Apr 2021

Changes to ‘.au’ domain name rules: implications for Australian trademark owners

New eligibility rules for holding a ‘.au’ domain name came into effect on 12 April 2021. It is particularly important for foreign entities holding ‘.au’ domain names to assess whether they will remain eligible. Read more

16 Apr 2021

The KOTEX case or the importance of expressly stating the grounds on which an opposition is based

In a victory for Kimberly Clark Worldwide Inc, Peru’s Administrative Court of Appeals has declared - pursuant to a Supreme Court of Justice order - the nullity of two resolutions issued over 14 years ago in a dispute involving two KOTEX marks. Read more

15 Apr 2021

Success for Andreas Stihl as General Court finds that colour combination mark is valid

This decision of the General Court highlights that it is crucial to include precise descriptions in applications for the registration of trademarks consisting of a combination of colours. Read more

15 Apr 2021

Federal Circuit: you can’t camouflage express trademark contract terms

This dispute between the US Army and a brand management company that sold clothing bearing the Army logo addresses a range of trademark licensing issues. Read more

14 Apr 2021

Supreme Court refers SodaStream bottle refilling and relabelling case to CJEU

The Finnish Supreme Court has referred questions to the CJEU for a preliminary ruling in a case where carbon dioxide cylinders had been placed on the market with the trademark owner’s consent, but the extent to which the refiller could relabel the goods remained open to interpretation. Read more

14 Apr 2021

While “You can’t always get what you want”, the Stones did get some “Satisfaction”

The “Hand of Fate” - or at least IP Australia - was smiling on Mick Jagger and the Rolling Stones in their recent victory over Australian fashion company We the Wild Ones. Read more

13 Apr 2021

The Lego brick saga continues: is Lego’s design registration valid?

The General Court has found that the EUIPO had erred in finding that a registered Community design representing a building block from a toy building set was invalid, having failed to examine the relevance of the exception relied on by Lego under Article 8(3) of Regulation 6/2002. Read more

13 Apr 2021

A distinctively Canadian approach to distinctiveness

As part of the overhaul of Canadian trademark laws, lack of distinctiveness was introduced as a possible bar to registration. Various strategies are available to overcome non-distinctiveness objections, but a level of uncertainty is likely to remain until the Trademarks Office’s practice falls into place. Read more

12 Apr 2021

Throwing shade at shadow companies - amendments to the Provisions on Administration of Enterprise Name Regulations

Compelling a shadow company to change its trade name used to be a costly and time-consuming exercise. However, several administrative measures have recently been introduced, marking a major improvement in the fight against shadow companies in China. Read more

12 Apr 2021

Does the buck(eye) stop here? Sixth Circuit reinstates Ohio state trademark claims

This decision of the US Court of Appeals for Sixth Circuit marks a key development in determining liability of virtual retailers, elaborating on when an online marketplace forgoes immunity from trademark infringement claims. Read more

9 Apr 2021

RestQ sleep aid products restrained due to similarity to Rescue Sleep products

The Australian Federal Court has restrained the maker of a sleep aid product from using the name RestQ due to the similarity with an existing product for dealing with sleeplessness sold under the names Rescue and Rescue Sleep. Read more

9 Apr 2021

New measures to improve IP rights protection system - key points highlighted

A resolution issued by the Uzbek president earlier this year has introduced numerous changes in the IP field. Most importantly, all legal entities and individuals are now entitled to register trademarks and service marks. Read more

8 Apr 2021

Attorneys’ fees: the steep price of not being exceptional

In this dispute between two hotel operators, the US Court of Appeals for the Seventh Circuit has considered the appropriate standard for determining what makes a trademark case sufficiently exceptional to warrant an award of attorneys’ fees. Read more

8 Apr 2021

New company law and recognition of well-known marks - what you need to know

Although Nigeria’s trademark law does not protect unregistered well-known trademarks against similar or identical company names, the owners of such marks may be able to rely on Section 852(1)(d) of the new Companies and Allied Matters Act 2020. Read more

7 Apr 2021

General Court confirms invalidity of EUTM on ground of bad faith due to prior contractual relationship

This decision highlights the case-by-case approach of the General Court when it comes to bad-faith filings - an area which still requires some clarification. Read more

7 Apr 2021

Uh-Oh Polly - the importance of unregistered design rights in the fashion industry

Where does inspiration end, and unlawful copying begin? This was the question considered by the High Court of England and Wales in this dispute between rival companies in the bodycon and bandage garments sector. Read more

6 Apr 2021

Bombay High Court: phonetic differences between STIMULIV and STIMULET not sufficient to tell one from the other

This decision of the Bombay High Court highlights that, when pharmaceutical preparations are involved, there should not be the slightest possibility of confusion, error or mistaken identity. Read more

6 Apr 2021

Use of Toyota’s marks on car parts held not to fall within Article 157 exception

Peru's Administrative Court of Appeal has found that use of the sign USE FOR TOYOTA/LEXUS AUTOPARTS on imported oil and fuel filters did not fall within the exception provided for by Article 157 of Decision 486. Read more

1 Apr 2021

General Court considers concept behind TIME

In this dispute involving the marks THE TIME and TIMEHOUSE, the EU General Court rejected the argument that the EUIPO had erred in failing to apply the counteraction theory, under which conceptual differences may counteract visual and phonetic similarities. Read more

1 Apr 2021

UDRP complaint for ‘ecourier.com’ fails to deliver

This decision highlights some important points for prospective UDRP filers, including that they are required to provide a complete and accurate record of material evidence, which may include pre-complaint correspondence - as failure to do so may be interpreted as an attempt to mislead the panel. Read more

31 Mar 2021

Supreme Court: no additional circumstances required in the assessment of descriptive trade names

In this dispute between British cheese manufacturer Dairy Partners and Dutch dairy company DOC Dairy Partners, the Dutch Supreme Court has put an end to longstanding uncertainty concerning the protection of descriptive trade names. Read more

31 Mar 2021

Colourful non-functionality argument misses the (design) mark

In this dispute between competitors in the field of mixing tips used by dentists, the US Court of Appeals for the Second Circuit has addressed the functionality of colours in design marks. Read more

30 Mar 2021

IPEC: evidence of use is insufficient to show that a neologism is a badge of origin

This UK case involving the term ‘Cryptoback’ highlights the difficulties faced by a party seeking to rely on goodwill associated with a newly-coined word used in relation to a particular product or service. Read more

30 Mar 2021

New procedure for the granting of GIs - what you need to know

This update highlights the main requirements that must be met in order to obtain GI protection in Venezuela pursuant to the new procedure established by the Trademark Office late last year. Read more

29 Mar 2021

The Kerry trademark wars: General Court confirms likelihood of confusion between KERRYGOLD and KERRYMAID - but only for non-English speakers

The EU General Court has confirmed that there was likelihood of confusion between KERRYGOLD and KERRYMAID for certain goods in Classes 29 and 30 for the large part of the relevant public who are not aware of the geographical significance of ‘kerry’. Read more

29 Mar 2021

Covid-19’s impact and amended Trademark Regulations - what you need to know

This update provides a brief overview of the effects of the covid-19 pandemic in Uganda and gives a peek into the recently amended Trademark (Amendment) Regulations 2021. Read more

26 Mar 2021

PUMA v PUMA-SYSTEM: reputed trademarks and the significance of the proximity between the goods and services

This decision of the EU General Court highlights the importance of providing solid arguments in relation to the existence of a link between two marks - even for trademarks with an exceptional reputation. Read more

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