Monday, 29 November 2021
How to initiate a trademark infringement action against a registered trademark in China
This landmark case involving US company Travel Sentry Inc should encourage IP rights owners to fight against free-riders who successfully register infringing trademarks.
A UDRP complaint out of the clear blue sky
This UDRP decision involving the domain name ‘skycell.com’ highlights that it is crucial for complainants to avoid presenting speculative arguments.
Friday, 26 November 2021
Pfizer’s opposition against registration of RUXXIMLA partially successful
The case confirms that the high degree of attention of the relevant public in respect of goods/services related to the medical field does not automatically rule out the existence of a likelihood of confusion.
New Administrative Court of Appeals mandatory precedent on issuance of new resolutions
At issue was whether the maximum term for resolving administrative proceedings under Peru’s Legislative Decree 1075 applies where a first decision has already been issued, but has subsequently been declared null.
Thursday, 25 November 2021
AC Milan fails to register AC MILAN mark for stationery
In a blow to AC Milan football club, the General Court has confirmed that there was a likelihood of confusion between the mark AC MILAN and the earlier German mark MILAN for Class 16 goods.
IPEC ruling favours one Archangel over another
This dispute between two holistic therapists over the use of the mark ARCHANGEL ALCHEMY shows that the protection of a registered trademark may be trumped by prior unregistered rights.
Wednesday, 24 November 2021
Nissan v EUIPO: General Court rules that E-POWER and VDL E-POWER are not confusingly similar
This dispute between Japanese car manufacturer Nissan and Dutch company VDL Groep highlights the role that company names can play within composite marks.
Keeping trademarks ‘fresh’: the onus is on the opponent
This decision of the Federal Court of Australia demonstrates that unused marks can be successfully defended against non-use removal in certain circumstances.
Tuesday, 23 November 2021
MONSTER ENERGY case: what’s in a coffee?
The General Court has found in favour of Frito-Lay Trading Company GmbH in another of its cases against Monster Energy Co concerning the MONSTER marks.
Amendments to Criminal Procedure Code set to facilitate criminal enforcement of industrial property rights
Amendments to Vietnam’s Criminal Procedure Code have recently been passed, removing a cumbersome requirement that has been hampering the enforcement authorities’ efforts to bring criminal actions against offences under Article 226.1 of the Penal Code.
Monday, 22 November 2021
General Court considers likelihood of confusion between ‘Süzme Peynir’ marks
The mere fact that ‘Süzme Peynir’ means something (ie, ‘cottage cheese’) to the Turkish-speaking public was not sufficient to establish a particular category of consumers targeted by the application for PINAR SÜZME PEYNIR.
Evidence of targeting is key under the UDRP
This UDRP decision highlights that it is crucial for brand owners to provide convincing evidence to establish the respondent’s intent to benefit unfairly from their trademark at the time of registration.
Friday, 19 November 2021
Delhi High Court: intent to target Indian market is sine qua non condition to exercise jurisdiction
Tata Sons failed to prevent Hakunamatata Tata Founders and others, which deal in cryptocurrency under the name/mark TATA COIN/$ TATA, from using the trademark TATA.
Supreme Court recognises need for legal certainty in assignment of IP rights
This decision of the Slovenian Supreme Court constitutes a crucial step towards legal certainty, clarifying the circumstances in which an assignment declaration or consent for transfer of an IP right will be considered valid.
Thursday, 18 November 2021
Highest-ever amount of damages awarded to New Balance in trademark infringement action
New Balance has been awarded Rmb18 million in damages in a trademark infringement action brought against a Chinese shoemaker - which is significantly higher than the maximum amount of statutory damages established by law.
Frida Kahlo: portrait of a woman
In these opposition proceedings before the EUIPO, Mexican artist Frida Kahlo’s unique image was deemed - somewhat surprisingly - as simply representing a portrait of a woman.
Wednesday, 17 November 2021
Supreme Court rules on judges’ discretion to decrease amount of compensation for trademark infringement
Trademark owners may claim compensation for infringement under Article 1515 of the Russian Civil Code by choosing one of three methods of calculation. Although the outcome of claims based on option 1 is the least predictable, two recent rulings have shed some light of this issue.
Board of Appeal annuls refusal to register position marks for taxi services
The Board of Appeal has annulled decisions of the Estonian Patent Office refusing to register position marks consisting of a black checkerboard device on a yellow oval background placed on the front door of a taxi car.
Tuesday, 16 November 2021
General Court confirms likelihood of confusion between SYNDICATE marks
The General Court held that the consumers concerned would assume - or were liable to assume - that the mark RACING SYNDICATE was merely a special product line covered by the earlier mark SYNDICATE.
Bad news for Deckers as court issues decision in UGG boots case
This decision of the Serbian Commercial Court illustrates the importance of registering designs in order to be able to claim infringement.
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