Wednesday, 07 December 2022
Ninth Circuit uncorks new way to serve trademark complaints
Section 1051(e) of the Lanham Act allows a plaintiff in a district court case to serve a complaint against a foreign defendant via the director of the USPTO.
Court of Cassation puts an end to long-running Sheraton dispute
A dispute involving the SOYIÇ HOTEL device mark and Sheraton’s well-known S device mark has come to an end following a decision of the Court of Cassation - although the defendant may still appeal.
Tuesday, 06 December 2022
New CJEU decision on parallel importation of medicinal products: a victory for trademark owners
The decision confirms that repackaging may take place only where it is “objectively necessary” according to the BMS conditions.
Full Federal Court dismisses Corner Hotel appeal
The decision makes it clear that the test for deceptive similarity involves consideration of the ordinary consumer’s imperfect recollection of the registered trademark.
Monday, 05 December 2022
LVMH successfully blocks copycat trademark application incorporating its shield device
Word-and-device trademarks have increasingly fallen victims to trademark squatters. However, in a recent case, LVMH has succeeded in preventing the registration of a mark that incorporated the TAG Heuer shield device.
BASTARD BURGERS v GHOSTBASTARDS: Borgarting Appeal Court confirms lack of risk of confusion
Arguably, the starting point for the assessment was not laid down correctly, which caused several errors in the subsequent analysis.
Friday, 02 December 2022
Landmark CJEU ruling clarifies limits of rebranding generics as branded medicines
The court provided much needed guidance on how to reconcile trademark rights and the free movement of goods in relation to the parallel import of generic medicines.
Trademark consisting solely of colours granted to Korean company for the first time
The Intellectual Property Trial and Appeal Board found that the mark had a unique colour combination that was not commonly found within the industry.
Thursday, 01 December 2022
CNIPA strikes decade-old trademark registrations incorporating Bruce Lee’s image on ground of deceptiveness
It seems that the CNIPA stretched the ground of deceptiveness in this case to serve a good cause.
Lao Department of Intellectual Property issues country’s first trademark cancellation decision
The decisions constitute a significant development in cancellation proceedings in Laos, and will hopefully build momentum for other types of adversarial proceedings.
Wednesday, 30 November 2022
Court of Rome sides with Juventus in first European decision on use of trademarks in NFTs
The decision is particularly interesting in light of the future addition - from 1 January 2023 - of NFTs to the list of goods falling within Class 9.
Major success for Banksy at the EUIPO Board of Appeal
The Fifth Board of Appeal of the EUIPO rejected the claim that the figurative mark known as “Laugh Now, But One Day We’ll Be In Charge” had been applied for in bad faith.
Tuesday, 29 November 2022
General Court confirms likelihood of confusion between GREENWICH POLO CLUB and BEVERLY HILLS POLO CLUB
The court found that the place names ‘Greenwich’ and ‘Beverly Hills’ had only a low, or even very low, impact on the conceptual content of the signs, since they would still refer to the same concept of the game of polo.
To infinity and beyond: California court grants motion to dismiss trademark complaint against Meta logo
The court granted Meta’s motion to dismiss, finding that it “border[ed] on implausible” that Dfinity’s purchasers would be “duped by a logo”.
Monday, 28 November 2022
Hermès awarded Rmb2 million in damages for misuse of its trademark and iconic design elements by real estate developer
The decision confirms that obtaining well-known trademark recognition is the best way to enjoy cross-class protection.
Well, well, well… General Court confirms that WELL AND WELL pharma mark has limited scope of protection
This is the third time that the owner of the mark WELL AND WELL has unsuccessfully opposed the registration of a mark containing the element ‘well’ for pharmaceutical goods and services.
Friday, 25 November 2022
General Court confirms lack of likelihood of confusion between marks representing a head
While the earlier marks consisted of the representation of a canine head, the overall impression created by the opposed sign made the identification of the head of an animal, let alone of a particular animal, highly arbitrary.
Federal Circuit upholds preliminary injunction in trade dress case
The US Court of Appeals for the Federal Circuit enjoined the defendant from marketing a particular configuration of medical device filters without clear source-identifying indicia.
Thursday, 24 November 2022
K v K K WATER: General Court confirms that single-letter trademarks benefit from limited protection
In a victory for French cosmetics giant L'Oréal, the court found that there was no likelihood of confusion between the company’s figurative sign K K WATER and the earlier mark K for identical goods.
Injunction overturned: no goodwill without use or registration
The decision restores an established principle of trademark law that goodwill cannot exist absent use or registration.
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