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Updates from an international team of correspondents who report on recent developments in trademark law and practice in their home jurisdictions, as well as strategic issues and those relating to brand protection, portfolio management and value creation.
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New 21 SEPTEMBER 2023China Bistro clarifies principles of trademark similarity and disclaimers
The Delhi High Court has found that phonetic similarity trumps visual dissimilarity in a trademark infringement case between food industry rivals. While the defendant Wow Momo Foods is defeated in this instance, the main suit is still ongoing.
14 SEPTEMBER 2023How to navigate 'hush' branding disputes
In the somewhat taboo realm of menstrual hygiene products, a trademark dispute illuminates the convergence of statutory rights and social mores and the crucial role that courts can play in resolving matters where such competing needs collide.
07 SEPTEMBER 2023Google keyword ruling indicates evolving trademark jurisprudence in digital realm
The Delhi High Court has ruled that since Google monetises its keyword suggestion tool, its use of trademarks as keywords constitutes advertising under the Trademarks Act. It also compromises its claim to safe-harbour immunity, which is offered to intermediaries under the Information Technology Act.
New 21 SEPTEMBER 2023Appeal court finds prior settlement does not impact future trademark licensees
The 11th Circuit has allowed a trademark licensee to bring a claim for unfair competition, despite a lack of authorisation in the licensing agreement. The court held that a previous agreement not to sue did not restrict the future licensees’ ability to take legal action against one another.
14 SEPTEMBER 2023Nothing lost in translation: book’s Spanish version is not a different creative work
Douglas Wood’s bid to register the titles of his English life guide and its Spanish translation has been rejected by the TTAB. The board maintained that the book and its translation were versions of the same work, not a series – and thus ineligible for trademark protection.
07 SEPTEMBER 2023Fourth Circuit affirms that disgorgement of profits is an appropriate remedy for breach of contract
Addressing the breach of a confidential settlement agreement, the Fourth Circuit has upheld a district court’s summary judgment rulings in a real estate trademark dispute, agreeing on all six likelihood-of-confusion factors.
14 SEPTEMBER 2023Lamborghini and Novartis prove effectiveness of invalidation and opposition proceedings to combat trademark squatting
In its attempts to crack down on malicious trademark registration, the CNIPA is applying Article 44(1) of the Trademark Law. In many cases, however, it is difficult to prove confusion among the relevant public.
07 SEPTEMBER 2023CNIPA cracks down on malicious registration using Article 4 of the Trademark Law
Trademark squatting is posing a sizeable challenge for genuine mark owners. The CNIPA is taking several measures to tackle the practice, including by strengthening the examination process.
27 JULY 2023Online filing of trademark registrations soars in popularity
Increased accessibility, streamlined procedures, lower costs, comprehensive information and global reach that online registration platforms offer are drawing the attention and use of Chinese applicants, establishing these platforms as the preferred avenue.
07 SEPTEMBER 2023Slovenian legislative overhaul reflects valuable steps towards harmonisation with EU IP framework
Amendments to the Slovenian Industrial Property Act signal that Slovenia is keen to modernise its legislation to keep up with digital trends. Other changes address extension-of-time requests and cancellation procedures, among many others.
06 JULY 2023Montenegro aligns its trademark regime with EU standards
The Balkan country has amended and modernised its national trademark law, harmonising new IP regulations with EU norms with regard to registration, opposition and protection.
22 JUNE 2023Key differences between trademark regimes in Albania and Kosovo
While the trademark regimes of these neighbouring Balkan jurisdictions share certain key features, they also have crucial differences that international brand owners should have firmly on their radars.
31 AUGUST 2023Turkish government increases fees and VAT rates for IP services
Companies and foreign rights holders must review their budgets and financial strategies to effectively accommodate changes to official fees and VAT rates. Adapting to these revised increases will help businesses to ensure compliance and avoid any potential penalties.
29 JUNE 2023TURKPATENT sheds a new light on ‘immaterial details’ following syringe design appeal
In reversing its initial rejection of a syringe design, TURKPATENT has signalled a new approach to assessing design novelty. The decision shines a spotlight on the complexity of immaterial details and the importance of defining them due to their potential impact on a design’s identity and expression.
18 MAY 2023Supreme Court disregards tradition of cumulative protection for trademarks in pharmaceutical case
The Supreme Court’s momentous ruling on a dispute over a pharmaceutical trademark disregards the cumulative protection for marks established in previous legislation, separating protection from unfair competition provisions and eschewing well-worn precedent.
24 AUGUST 2023Alternative methods to curb trademark squatting amid post-registration opposition abolition
A draft amendment to Taiwan’s Trademark Act is set to replace the post-registration opposition system with invalidation proceedings. It will introduce a trial and appeal board and will allow third parties to submit observations during the pre-registration examination process.
13 JULY 2023Amended good-faith prior use clause could threaten predictability in trademark suits
An amendment to Taiwan’s Trademark Law will muddy the scope of protection provided by good-faith prior use. This may make it more difficult for defendants to argue legitimate use of marks and for courts to assess infringement.
11 MAY 2023Wide-ranging draft amendment looks set to reshape trademark landscape
The recently passed draft aims to modernise the Taiwanese trademark regime, shaking up pre-existing policies with regard to applications, reviews, oppositions, cancellations and Customs proceedings.
20 APRIL 2023Key amendments to Civil Code of Procedure alter interim injunction proceedings in trademark cases
Amendments accepted in March officially codify a mix of new and previously existing practices of Polish IP courts into law, affecting rights holders at each stage of interim injunction proceedings.
23 FEBRUARY 2023McDonald’s reversal shines spotlight on proving genuine use in Poland
The EUIPO’s seismic cancellation – and eventual reinstatement upon appeal – of a McDonald’s registered mark highlights issues with Poland’s rules for proving genuine use.
02 FEBRUARY 2023Patent Office’s e-platform is a hit with target audience
Three years since its debut, analysis of user rates clearly shows that the electronic services platform – a pivotal part of the office’s push for digitisation – continues to develop and help resolve users’ IP issues.
16 FEBRUARY 2023How trademark use requirements influence permissible brand evolutions
To ensure the viability of their brand’s evolving intellectual property, it is crucial that Swiss trademark owners understand and comply with proper use guidelines regulating any changes to existing marks.
26 JANUARY 2023How to protect trademarks against non-use effects in Switzerland
Understanding Switzerland’s particular trademark use requirements is crucial for rights holders developing their protection and defence strategies and for applicants hoping to secure their marks.
21 OCTOBER 2021Swiss authorities relax examination practices for trademarks featuring a place name
With exceptions, it will no longer be a prerequisite to limit goods and services to their geographical origin for trademarks containing an indication of source. The Swiss Federal Institute of Intellectual Property appears to be becoming more flexible, aligning its approach with that of the European Union.
31 MARCH 2022More than a wine label when prestige is at stake
When a trademark achieves a reputation, owners can claim broader protection on goods and services not designated by their original registration. However, such brands also attract counterfeiters, which as the recent infringement of the PETUS mark shows, can damage reputation.
03 JUNE 2021The burdens of popularity – Canadian examination times and new office practices
The first of a two-part article examining the Canadian Intellectual Property Office’s latest steps to address its ongoing backlog of applications examines recent practice notices aimed at increasing the speed and efficiency of domestic application examination.
19 NOVEMBER 2020Bricks and mortar or is online in order? Federal Court of Appeal checks in to trademark use and hotel services
The Federal Court of Appeal has handed down its decision in Miller Thomson v Hilton Worldwide Holding LLP, which relates to a non-use cancellation proceeding against the WALDORF-ASTORIA mark. The decision helps clarify what it means to provide hotel and motel services in Canada.
12 NOVEMBER 2020EMPOWER-ing trademark infringement claims against public authorities
A recent case demonstrates that public authorities can be held liable for trademark infringement, even where they have obtained protection for an official mark.
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