Tuesday, 14 November 2023
Tesla fails to establish earlier unregistered rights in GIGABIER
The case serves as a reminder that the mere announcement of a new product is not sufficient to prove unregistered trademark rights under Article 8(4) of Regulation 2017/1001.
Targeting is essential for a transfer under the UDRP
The decision highlights the difficulties of establishing bad faith in a passive holding case where targeting evidence is scarce.
Monday, 13 November 2023
CNIPA recognises distinctiveness of Tommy Hilfiger’s ‘TH’ interlocking pattern
Following an initial refusal, the CNIPA has found on review that Tommy Hilfiger’s new monogram had intrinsic distinctiveness and could act as a source identifier.
BICC disappointment in passing-off dispute: IPEC examines chain of title, goodwill and ‘folk memory’
The case highlights that, to avoid chain of title disputes, it is advised to keep contemporaneous records where IP rights are being transferred.
Friday, 10 November 2023
General Court confirms that ENDURANCE lacks distinctiveness
The decision examines the registrability of marks consisting of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase.
Anytime Fitness unsuccessful in opposition against ANYTIME 24 for fitness services
The JPO concluded that there was no likelihood of confusion between the figurative mark ANYTIME 24 and the earlier mark ANYTIME FITNESS.
Thursday, 09 November 2023
False declaration of incontestability not enough to cancel US trademark registration
The decision limits the tools that the USPTO can use to punish and deter mark owners who make fraudulent Section 15 filings.
Crimes against intellectual property to be included in organised crime legislation
The move constitutes an important advancement in IP enforcement, as IP crimes are linked to other types of organised crime.
Wednesday, 08 November 2023
Battle of the dachshunds: figurative and word elements of composite marks may be co-dominant
The decision also provides an important clarification on the powers of the General Court.
Trademark applications to be published directly after being received by IP Vietnam
The move is good news for trademark owners and practitioners, who will have access to more up-to-date information.
Tuesday, 07 November 2023
AIWA case highlights effectiveness of Andean oppositions
The case demonstrates the importance of obtaining protection not only for word marks, but also for word-and-device marks.
UDRP: the pivotal role of substantial evidence
UDRP complaints should be thoroughly substantiated and not contain bare assertions.
Monday, 06 November 2023
CJEU considers international jurisdiction over defendants from different member states
The ruling affirms the findings of Nintendo v BigBen regarding the conditions of application of Article 8(1) of Regulation 1215/2012.
PTO prepares for administrative revocation of trademarks
With the entry into force of Article 26 of the Industrial Property Code just around the corner, the PTO has accelerated its preparations and released a draft regulation for comment.
Friday, 03 November 2023
General Court: EUIPO did not infringe principles of protection of legitimate expectations and legal certainty
The decision provides some clarity on the extent to which EUTM owners may rely on the principles of the protection of legitimate expectations and legal certainty.
IP High Court: ATHLETE CHIFFON is descriptive in relation to hotel and restaurant services
The relevant consumers would perceive the mark as referring to a restaurant providing chiffon cakes for athletes when used in relation to Class 43 services.
Thursday, 02 November 2023
CJEU: mandatory jail for trademark infringement “disproportionate”
The CJEU considered the compatibility with EU law of the penalties for infringement provided by the Bulgarian Criminal Code.
Court of Session Outer House addresses appeal from UKIPO in whisky spat
This is only the second time that the Court of Session in Scotland has considered an appeal from the UKIPO under Section 76 of the Trademarks Act.
Wednesday, 01 November 2023
Michelin's well-known trademarks protected against use for pet food and pet hospital
Two recent judgments constitute new milestones in the protection record of Michelin's well-known trademarks.
Amended customs legislation put to the test: key takeaways
Two years after the amended customs legislation came into force, practical conclusions about the new reality faced by IP rights holders may be drawn.
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