Market Insight

New 21 SEPTEMBER 2023

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.

Authors:
Jessica Kaur Sahni

14 SEPTEMBER 2023

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.

Authors:
Sonal Goel

07 SEPTEMBER 2023

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.

Authors:
Aarti Aggarwal

New 21 SEPTEMBER 2023

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.

Authors:
Gaylon Hollis

14 SEPTEMBER 2023

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.

Authors:
Dana Breitman

07 SEPTEMBER 2023

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.

Authors:
Kathleen Lynch

14 SEPTEMBER 2023

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.

Authors:
Cynthia Wang

07 SEPTEMBER 2023

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.

Authors:
Cynthia Wang

27 JULY 2023

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.

Authors:
Jane Chen

07 SEPTEMBER 2023

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.

Authors:
Mila Mihailovic

06 JULY 2023

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.

Authors:
Mila Mihailovic

22 JUNE 2023

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.

Authors:
Mila Mihailovic

31 AUGUST 2023

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.

Authors:
Stock Intellectual Property Services AS

29 JUNE 2023

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.

Authors:
Yasemin Arslan

18 MAY 2023

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.

Authors:
Müge Kurtbeyoğlu Uzgör

24 AUGUST 2023

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.

Authors:
Amanda Liu

13 JULY 2023

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.

Authors:
Samuel Cheng

11 MAY 2023

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.

Authors:
Tony Chang

15 JUNE 2023

A dispute involving the GI Scotch Whisky has led to a more harmonised approach between the DKPTO and EUIPO. It also highlights that consumer surveys are a powerful tool when evidence of public perception is required.

Authors:
Fabio Pezzolato

13 APRIL 2023

The publishing of the latest edition of the Nice Classification on 1 January 2023 provides clarity for applicants by highlighting disparities among the Scandinavian approaches to navigating trademark registration in digital marketplaces.

Authors:
Elizaveta Osipchuk

23 FEBRUARY 2023

With Norway set to end its tradition of protecting black and white versions of figurative trademarks from March, trademark owners and brands hoping to register must quickly assess the spectrum of colour protection their mark needs.

Authors:
Solvår Winnie Finnanger

20 APRIL 2023

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.

Authors:
Klaudia Błach-Morysińska

23 FEBRUARY 2023

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.

Authors:
Klaudia Błach-Morysińska

02 FEBRUARY 2023

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.

Authors:
Klaudia Błach-Morysińska and Paweł Poznański

16 FEBRUARY 2023

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.

Authors:
Isabelle Bruder

26 JANUARY 2023

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.

Authors:
Nathalie Denel and William Fauchoux

21 OCTOBER 2021

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.

Authors:
Nathalie Denel

31 MARCH 2022

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.

Authors:
François Willems

03 JUNE 2021

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.

Authors:
Jeffrey Vicq and Neil Melliship

19 NOVEMBER 2020

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.

Authors:
David Bowden

12 NOVEMBER 2020

A recent case demonstrates that public authorities can be held liable for trademark infringement, even where they have obtained protection for an official mark.

Authors:
Caroline Camp