Legal Updates

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28 Jan 2020

easyJet v easyBet - hosting provider ordered to take down infringing website

In a landmark decision, the Commercial Court of Argovia has held that the website at ‘easybet.com’ infringed the famous EASYJET trademark and ordered the Swiss hosting provider to take down the website. Read more

28 Jan 2020

Barcelona Court of Appeal upholds criminal sentence for possession of handbags infringing well-known registered design

The Barcelona Court of Appeal has upheld a condemnatory judgment sentencing the defendant to six months’ imprisonment for the possession of 240 handbags infringing a design belonging to the Robin Ruth Group. Read more

27 Jan 2020

Blow for JTI as application for figurative IJTI mark is upheld as valid

In Japan Tobacco Inc v EUIPO, the EU General Court has confirmed that there was no likelihood of confusion between IJ Tobacco Industry’s figurative mark IJTI and Japan Tobacco Inc’s earlier figurative mark JTI. Read more

27 Jan 2020

INDECOPI publishes new draft legislation on IP rights enforcement

The INDECOPI has published a document outlining its proposals to strengthen the enforcement of IP rights in Peru. Although the proposed changes constitute a positive step forward, they fail to address some important issues. Read more

24 Jan 2020

Court of Appeals refers to "fruits" of trademark infringement in landmark decision

Referring for the first time to the profits - or “fruits” – obtained by the defendant, Argentina’s Federal Civil and Commercial Court of Appeals has imposed the highest-ever amount of damages in a trademark infringement case. Read more

24 Jan 2020

Ukraine amends GI law – what you need to know

Amendments to the Ukrainian Law on Geographical Indications, which bring the national legislation into line with Regulation 1151/2012 on quality schemes for agricultural products and foodstuffs, entered into force on 1 January 2020.   Read more

23 Jan 2020

Blow for Nestlé as General Court finds that it failed to establish reputation of its ONE mark

In Amigüitos pets & life v EUIPO, the General Court has scored one for the little guy against big hitter Nestlé. Read more

23 Jan 2020

When it’s all in the family: reverse confusion not a basis for broad trademark remedies

In Fabick Inc v JFTCO Inc, a trademark dispute originating from a family feud, the US Court of Appeals for the Seventh Circuit has addressed the issue of reverse trademark confusion and the scope of available remedies. Read more

22 Jan 2020

No free ticket for toys at the border: BMW successfully defends itself against lawsuit by toy manufacturer

Well-known car manufacturer BMW has successfully defended itself against a lawsuit filed by a toy car manufacturer in Germany. The plaintiff sought an injunction and damages following an allegedly inadmissible seizure of goods at the border. Read more

22 Jan 2020

ARIPO: changes to the Harare and Banjul Protocols

Amendments to the Harare and Banjul Protocols, which were adopted at the African Regional Intellectual Property Organisation's 43rd Administrative Council Meeting in November 2019, came into effect on 1 January 2020. Read more

21 Jan 2020

Sony v EUIPO: when “annulment” really means “annulment”

The EU General Court has annulled a decision of the Fourth Board of Appeal of the EUIPO in revocation proceedings involving Sony’s mark VITA, as the board had failed to fulfil its obligation to hand down a fresh decision on all the relevant issues. Read more

21 Jan 2020

Weeded out of scope: UDRP designed to address specific cybersquatting issues

A recent decision involving the domain name ‘matrixmmj.com’ serves as a reminder that complex disputes, such as those between parties with current or past business relationships, generally fall outside of the UDRP’s scope. Read more

20 Jan 2020

BBC recovers its TOP GEAR trademark after two-year battle

The Russian Intellectual Property Court has overturned its earlier decision in a case involving the invalidation of the British Broadcasting Corporation’s TOP GEAR trademark. Read more

20 Jan 2020

Nivea - recognise the blue?

The dispute between Unilever and Beiersdorf over the latter’s abstract colour mark for its ‘Nivea Blue’, which lasted for over a decade, has finally come to an end. Read more

17 Jan 2020

Is RING distinctive for doorbells and motion sensors?

In a blow to Amazon Technologies Inc, the EU General Court has confirmed that the figurative mark RING was descriptive in relation to doorbells, motion sensors and monitoring equipment. Read more

17 Jan 2020

‘Lotso’ more than non-exclusive licensor-licensee relationship needed for personal jurisdiction  

In Diece-Lisa Industries Inc v Disney Enterprises Inc, the US Court of Appeals for the Fifth Circuit has held that jurisdiction over the licensees does not extend personal jurisdiction to the licensor where the latter has no additional contacts with the forum. Read more

16 Jan 2020

Changes to customs enforcement of IP rights - key points highlighted

The amendments to Ukraine’s Customs Code related to customs enforcement of IP rights entered into force on 14 November 2019. The amending law, which is modelled after Regulation 608/2013, aims to bring Ukrainian legislation into line with EU standards. Read more

16 Jan 2020

IP Office overturns problematic lower-instance decision on recognition of English-language terms

In a victory for US media company Discovery Communications LLC, the Ecuadorian IP Office has overturned its prior finding that the English terms ‘animal’ and ‘planet’ would not be easily understood by the general Ecuadorian public.   Read more

15 Jan 2020

General Court confirms lack of likelihood of confusion between CRYSTAL and CRISTAL

In Super bock group v EUIPO, the EU General Court has confirmed that there was no likelihood of confusion between the mark CRYSTAL for non-alcoholic beverages and foodstuffs in Class 30 and the earlier Portuguese mark CRISTAL for beer in Class 32. Read more

15 Jan 2020

UDRP: the importance of full disclosure

A recent UDRP decision involving the domain name ‘breakforthcanada.com’ illustrates the importance of disclosing any relationship between the parties and mentioning any ongoing litigation. Read more

14 Jan 2020

Supreme Court provides guidance on assessment of evidence in trademark cancellation action

In a cancellation action involving the mark MI COPILOTO, the Chilean Supreme Court has considered whether uncertified copies could be admitted as evidence of a trademark’s reputation. Read more

14 Jan 2020

Munchkin wins IPEC baby bath design dispute against Shnuggle

The Intellectual Property Enterprise Court of England and Wales has found that Munchkin did not infringe Shnuggle’s registered Community designs and unregistered UK design rights by selling its Sit & Soak baby bath. Read more

13 Jan 2020

Seventh Circuit formally adopts Octane Fitness standard for trademark cases

The US Court of Appeals for the Seventh Circuit has joined its sister circuits in holding that the Supreme Court standard for awarding attorney’s fees in patent cases, set forth in Octane Fitness, was equally applicable to attorney’s fees claims under the Lanham Act. Read more

13 Jan 2020

Dell successful in two UDRP proceedings involving ‘.co’ domain names

Dell has recently prevailed in two UDRP proceedings involving ‘.co’ domain names consisting of its DELL trademark and a generic word. Read more

10 Jan 2020

CANNABIS decision: coffee and (space) cakes at the General Court

In Conte v EUIPO, the EU General Court has confirmed that the mark CANNABIS STORE AMSTERDAM was contrary to public policy or to accepted principles of morality under Article 7(1)(f) of EU Regulation 2017/1001. Read more

10 Jan 2020

New law on trademarks and GIs brings important changes

Bulgaria's new law on trademarks and geographical indications entered into force on 17 December 2019. It brings significant changes to certain aspects of substantive and procedural law, including new absolute and relative grounds for refusal and cancellation. Read more

9 Jan 2020

Blow for Chanel as district court holds that rebottling is not an act of infringement 

In ScentWish Ltd v Chanel, the Tel Aviv District Court has held that the rebottling of CHANEL® perfumes does not constitute trademark infringement under the ‘genuine description’ exception provided for by Section 47 of the Trademarks Ordinance. Read more

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