Tuesday, 18 July 2023
Oppositions under Article 8(4): General Court sheds light on several issues
Notably, the court noted that a high price is not sufficient, in itself, to conclude that a market is narrow.
Important announcement: trademark reservation now possible
The Ministry of Justice and Constitutional Affairs has recently restarted the process to allow trademark owners to ‘reserve’ their marks.
Monday, 17 July 2023
New registry and court practices regarding “change of circumstances” in trademark proceedings: a positive development for brand owners?
While the changes should be welcomed, brand owners must still take into account certain key issues when deciding on their filing strategies.
Dispute over estate agent’s name highlights importance of protecting IP before starting business relationship
The decision shows the importance of having clear and up-to-date agreements expressing your intention on IP ownership.
Friday, 14 July 2023
Bison grass vodka producer fails to block competing 3D mark after 20-year battle
The latest decision in this long-running saga seemingly raises the bar for opponents seeking to prevent an agent or representative from filing a non-traditional mark in their own name.
Does use of an infringing mark on a website constitute ‘use’ in a trademark sense?
The mere fact that consumers in Singapore may access a website featuring allegedly infringing signs does not mean that these signs have been used in Singapore.
Thursday, 13 July 2023
IPC Court provides guidance for determining whether sign is used as a trademark in infringement cases
It is important, notably, to assess whether the product displays other signs that are more likely to be perceived as indicators of origin.
Hermès unsuccessful in opposition against HERDES
The JPO’s Opposition Board found that HERDES and HERMÈS were dissimilar, notably highlighting the visual difference between the letters ‘D’ and ‘M’.
Wednesday, 12 July 2023
PTO decision sheds light on protection of well-known trademarks
In a victory for HP Hewlett Packard Group LLC, the Re-examination and Evaluation Board rejected a trademark application containing the same word element, in the same colour, as the well-known HP marks.
All’s well that EDWELL: two markets can be substantially different if defined narrowly enough
In this dispute involving two nearly identical marks for education-related services, the US Court of Appeals for the 10th Circuit upheld a finding of non-infringement as the parties’ services and marketing channels were dissimilar.
Tuesday, 11 July 2023
Cheers and confusion: General Court agrees that STONE and STONES are one and the same
One of the key issues raised by Stone Brewing in this dispute with Molson Coors was the refusal of the EUIPO to suspend proceedings due to the uncertainties of Brexit.
UDRP: personal names generally evidence respondents’ rights
The panel held that, typically, the first person in time to register a domain name would normally be entitled to use the domain name for any legitimate purpose it wished.
Monday, 10 July 2023
High Court ruling ‘stitches’ together uncertainty over TikTok trademark opposition
The decision highlights the need for an examiner to consider each single term of a specification separately.
Nintendo’s IP rights successfully enforced against live entertainment shows
Nintendo of America Inc has obtained the cancellation of live shows that infringed its IP rights in characters and trademarks related to Super Mario.
Friday, 07 July 2023
General Court emphasises importance of conceptual difference and graphic elements in figurative sign
Notably, the court held that the word ‘eva’, as a female first name, conveyed semantic content, while the sign EVAX, being merely a fanciful word, was devoid of such content.
Changes in formality requirements for filing documents at Laos DIP
In a move that will be welcomed by IP rights holders, Laos DIP has issued a new notification that removes some burdensome formality requirements.
Thursday, 06 July 2023
‘.ai’ rides the wave of interest in AI
The Anguillan ccTLD, ‘.ai’, appears to be reaping the benefit of the current intense interest in AI, with its domain name registration numbers skyrocketing.
Common sense: non-parties not precluded by ex parte re-examination termination
The case serves as a useful reminder of the delimitations of an ex parte re-examination or expungement proceeding.
Wednesday, 05 July 2023
How effective is a counterclaim for invalidity in infringement proceedings?
This decision of the CJEU will provide useful guidance to defendants in infringement proceedings considering whether to rely on a counterclaim for a declaration of invalidity.
Court confirms that NAUJOJI RŪTA is confusingly similar to RŪTA
The addition of the element ‘Naujoji’ in the mark applied for, as well as the presence of additional graphic elements in the earlier marks, did not create a different overall impression.
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