Legal Updates

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2 Apr 2020

Venezuela establishes new procedure for protecting local GIs

The Venezuelan Intellectual Property Office has established a new procedure for protecting local geographical indications based on the Paris Convention, which it published in a bulletin in February 2020. Read more

2 Apr 2020

Prior use defence: trademark use must be continuous and voluminous

In a dispute between two mattress manufacturers over the use of the NO TURN mark, the High Court of Delhi has held that the prior use defence in a trademark infringement/passing-off action cannot be accepted where the use is intermittent and not voluminous. Read more

1 Apr 2020

Supreme Court holds that first sale doctrine still applies to sales of goods in violation of sales restrictions in licence agreement

In a blow for licensors in South Korea, the Supreme Court has held that a distributor which sold products that it believed to have been lawfully obtained from a trademark licensee was not criminally liable for trademark infringement. Read more

1 Apr 2020

Mexico joins Hague design registration system

Mexico has deposited its instrument of accession to the Geneva Act of the Hague Agreement, bringing the number of members to the Hague design registration system up to 74. This is likely to have a significant impact on the number of Hague designs being applied for. Read more

31 Mar 2020

adidas v H&M: H&M did not cross the line with its two-stripe sign

Following a 23-year-long trademark dispute between adidas and H&M, the Court of Appeal of The Hague has ruled that H&M’s use of a specific two-stripe sign on its sports clothing did not infringe adidas’s three-stripe mark. Read more

31 Mar 2020

Indonesian IP office and other government bodies limit operations due to covid-19

Pursuant to a notification issued on 30 March 2020 regarding the Covid-19 outbreak, the Indonesian Directorate General of Intellectual Property has closed its physical counters while optimising online channels for IP matters. Read more

30 Mar 2020

Amendments to the Industrial Property Act come into force – what you need to know

Amendments to the Industrial Property Act, which were adopted by the Slovenian Parliament on 4 March 2020, came into force on 29 March 2020. This update summarises the key changes for applicants and trademark owners. Read more

30 Mar 2020

EUIPO guidelines: more guidance now available

The EUIPO’s new trademark and design guidelines entered into force as of 1 February 2020. While there are no fundamental changes to the 2017 version of the trademark guidelines, the new guidelines shed light on various aspects of interest for practitioners. Read more

27 Mar 2020

easyGroup v Easyfly: relationship between jurisdiction and targeting in online trademark infringement

In easyGroup Ltd v Easyfly SA, the High Court has provided a helpful summary of the relationship between jurisdiction and targeting in online trademark infringements following claims of infringement, passing off and conspiracy brought by easyGroup against Colombian airline Easyfly. Read more

27 Mar 2020

Success for Cypriot halloumi producers as CJEU sends BBQLOUMI case back to General Court

In opposition proceedings involving the mark BBQLOUMI and the earlier collective mark HALLOUMI, the Court of Justice of the European Union has ruled in favour of the Cypriot halloumi producers and referred the case back to the General Court. Read more

26 Mar 2020

WIPO panel finds that Danish start-up Acubit engaged in reverse domain name hijacking

Technology start-up Acubit claimed that Danish trademark rules and practice should assign domain names to the relevant trademark owner. A panel from the WIPO Arbitration and Mediation Centre disagreed, as the UDRP governs in case of reverse domain name hijacking. Read more

26 Mar 2020

Seizure of counterfeit rolling bearings highlights importance of buying goods from authorised sales points

In 2018 the National Customs Office seized an in-transit container of counterfeit rolling bearings in Uruguay. This case, which is still ongoing, is significant due to the type of product involved. Read more

25 Mar 2020

Energizer v Gillette: the fight over depreciation of goodwill in Canada keeps going and going

While the decision of Canada’s Federal Court of Appeal in Energizer Brands v The Gillette Company avoided squarely addressing the limits of claims for depreciation of goodwill under Section 22 of the Trademarks Act, the case may ultimately result in greater clarity. Read more

25 Mar 2020

Protected designation of origin: Nosecco evokes Prosecco

The decision of the UK Intellectual Property Office in opposition proceedings against a mark containing the word ‘Nosecco’ shows that protected designations of origin can benefit from a lower hurdle of evocation when compared with likelihood of confusion. Read more

24 Mar 2020

Bombay High Court comes down on infringers for copying BIG BROTHER and BIGG BOSS marks

The Bombay High Court has prevented Andaman Xtasea from using the ANDAMAN BIG BRO and ANDAMAN BIGG BOSS marks, as well as certain taglines and the depiction of an eye, ruling that it was nothing but an attempt to come as close as possible to Endemol’s marks and deceive the public. Read more

24 Mar 2020

Internet sales lead to personal jurisdiction, despite no physical presence

In Curry v Revolution, the US Court of Appeals for the Seventh Circuit has concluded that the plaintiff had made a prima facie showing that the defendants, who had no physical presence in the forum state, were subject to personal jurisdiction based on sales through an interactive website. Read more

23 Mar 2020

CJEU criticises General Court for using “less attractive” as measure of damage to marks with a reputation

In Tulliallan Burlington Ltd v EUIPO, the Court of Justice of the European Union has set aside the decisions of the General Court in opposition proceedings involving earlier marks with a reputation. Read more

23 Mar 2020

Covid-19 extraordinary measures: IP prosecution and enforcement actions suspended

Following an emergency decree published on 15 March 2020, the terms of all ongoing administrative procedures has been suspended for 30 business days in Peru. This has a direct impact on all procedures pending at the Trademark Office. Read more

20 Mar 2020

CJEU specifies at which stage “marketing circumstances” should be taken into account

The Court of Justice of the European Union has clarified that, although the marketing circumstances are a relevant factor in the application of Article 8(1)(b) of Regulation 207/2009, they are not to be taken into account at the stage of the assessment of the similarity of the signs. Read more

20 Mar 2020

No bad-faith registration? No UDRP transfer

A recent case involving the domain name ‘wekit.com’ illustrates that UDRP panels insist on bad-faith registration and use in accordance with the plain wording of the policy. Read more

19 Mar 2020

Trademark agencies fined for seeking to register names of Wuhan coronavirus hospitals in bad faith

Two Chinese trademark agencies have been fined Rmb100,000 for filing bad-faith applications for the marks HUOSHENSHAN and LEISHENSHAN – the names of the hospitals built to treat coronavirus patients in Wuhan City. Read more

19 Mar 2020

High Court confirms that BIG HORN marks infringe Red Bull’s EU trademarks

The High Court of England and Wales has confirmed that Big Horn’s marks, which consist of a ‘double ram’ device with the words ‘Big Horn’, infringed energy drink giant Red Bull’s EU trademarks. Read more

18 Mar 2020

Balmain case: do not gamble on specialised public where mark has low distinctive character

The EU General Court has upheld a decision of the Fifth Board of Appeal of the EUIPO rejecting luxury fashion house Balmain’s application for the registration of a figurative mark depicting a lion’s head in Classes 14 and 26. Read more

18 Mar 2020

Guideline for handling outstanding appeals against disclaimers imposed by IP Vietnam

The Intellectual Property Office of Vietnam recently issued Notification 3280/TB-SHTT, which provides guidance on filing appeals against disclaimers made by the office, which were submitted before 15 January 2018 and remain unresolved. Read more

17 Mar 2020

Good news for brand owners and practitioners: Trademark Office publishes opposition decisions

In a widely applauded move, the China Trademark Office has announced that it would publish trademark opposition decisions issued as of 1 January 2020. Read more

17 Mar 2020

LOCH NESS TONIC case: appointed person decision provides no tonic to appellant

This case highlights the importance of assessing whether it is appropriate to appeal against a UKIPO decision if the appeal relies on arguments that contradict those with which the hearing officer agreed at first instance. Read more

16 Mar 2020

Court of Appeal reverses own decision in WING CHUN case

In an action for the invalidation of the mark WING CHUN (a traditional Southern Chinese close-range combat style), the Turkish Court of Appeal has reversed its own opinion and held that the mark should be invalidated for some services in Class 41. Read more

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