Monday, 18 March 2024
General Court provides guidance on what constitutes proof of reputation of earlier mark
The court clarified that presence on the Internet, through a website or on social media, may prove that a mark has acquired some reputation – but this must be supported by independent data and information.
Full Court upholds trademark infringement claim against Redbubble, but overrules damages award
The Full Court found that the primary judge had made an error in awarding nominal damages of A$8,250 because such amount was not nominal.
Friday, 15 March 2024
Supreme Court confirms that Amazon’s US website targeted UK consumers
The Supreme Court addressed for the first time the issue of when use of a trademark on a foreign website infringes a UK trademark.
Huge seizure of fake detergent carried out in clandestine workshop
The action is significant in that it shows that the monitoring of social media sites can be a very effective tool in the fight against counterfeits.
Thursday, 14 March 2024
PUMA v BERTRAND PUMA: marks with a “very high reputation” and the mental link required under Article 8(5)
The link which may be established in the minds of the relevant public with a mark that has an exceptional reputation cannot be presumed.
Board of Appeal overturns ISIPO decision in cancellation action
The case serves as a reminder of the difficulties of proving bad faith before the ISIPO or the Board of Appeal.
Wednesday, 13 March 2024
Yves Saint Laurent unsuccessful in opposition against ‘USL’ monogram
The JPO found that there was no likelihood of confusion between the ‘USL’ monogram and the famous ‘YSL’ monogram, even though both marks covered Class 25 goods.
CNIPA’s Regulations on Collective and Certification Trademarks: key points highlighted
The regulations impose stricter rules on collective and certification trademarks, while providing guidance on the use of geographical names in such marks.
Tuesday, 12 March 2024
Aldi’s infringement of M&S’ registered design for gin bottles upheld by Court of Appeal
The decision demonstrates the key role that registered designs can play in taking enforcement action against lookalike products.
‘courir.io’ decision: running out of evidence of bad faith under ‘.io’ Policy
The respondent’s claim that he had registered the disputed domain name because of its dictionary meaning (‘courir’ meaning ‘to run’ in French) was at least plausible and credible.
Monday, 11 March 2024
Volkswagen partly successful in VOLTWAGEN opposition
The decision emphasises once again that the requirements for proof of use of an EU trademark are very high.
Furniture company successful in invalidity proceedings based on bad faith
The decision provides a thorough review of the criteria to take into account in assessing bad faith, including the applicant’s knowledge and intention at the time of applying for the contested mark.
Friday, 08 March 2024
Full Federal Court considers use of 3D mark in dishwasher capsule dispute
The finding that use of a three-dimensional trademark was supported by a two-dimensional use is significant.
Refining the ‘a.tr’ domain allocation: what you need to know
The “Procedures and Principles for the Allocation of Domain Names with the ‘a.tr’ Structure” outline the roadmap for implementation, dividing ‘a.tr’ domain names into three categories.
Thursday, 07 March 2024
General Court: ‘BI’ element retained independent distinctive role in conflicting marks
The case shows the importance of determining the distinctive or dominant elements of the marks in opposition proceedings, even if the degree of similarity is fairly low.
Huge raid carried out against several targets in one of Lima’s biggest shopping centres
The enforcement authorities raided over 30 commercial establishments in the Polvos Azules gallery - a hotspot for fake goods - and seized approximately 30,000 units of fake apparel bearing marks such as ADIDAS and NIKE.
Wednesday, 06 March 2024
Federal Supreme Court issues landmark decision on customisation of branded goods
In a dispute between Rolex and a Swiss company engaged in the customisation of luxury watches, the court considered for the first time the issue of the unauthorised customisation of branded goods.
Registration in bad faith is essential for transfer under UDRP
Even where a domain name potentially appears to be used in bad faith, panels always need to consider bad faith at the time of registration - even if this was many years ago.
Tuesday, 05 March 2024
Good news for L’Oréal as General Court upholds opposition against LA CRÈME LIBRE
The decision puts into context the percentage of participants in a consumer survey that is required to establish a likelihood of confusion.
OREO v MOREO’S: rare trademark judgment issued
In a dispute between Intercontinental Great Brands LLC, the owner of the OREO mark, and Zayaan Investments Limited, the High Court found that Zayaan had acted in bad faith in registering the MOREO’S mark.
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