Monday, 01 November 2021
Party may not veil EU individual’s information under GDPR at the TTAB
In a rare precedential opinion, the US Trademark Trial and Appeal Board (TTAB) has ruled that the EU General Data Protection Regulation does not apply in TTAB proceedings.
Appeal court considers award of damages following assignment of trademark
This dispute over the use of certain designs on underwear raised some interesting issues such as the proof of infringement and the award of damages where the trademark at issue has been assigned.
Friday, 29 October 2021
General Court confirms distinctiveness of lobster logo for confectionary
In this dispute between two confectionery manufacturers, the General Court has confirmed that there was nothing to prevent consumers from perceiving a lobster logo as an indication of the origin of the goods.
Delhi High Court: Section 124 does not bar continuation of passing-off suit during pendency of rectification petition
The Delhi High Court has clarified that a passing-off suit is not covered by the scope of Section 124 of the Trademarks Act and need not be stayed during the pendency of rectification proceedings.
Thursday, 28 October 2021
General Court confirms that BLOCKCHAIN ISLAND lacks distinctive character
The General Court found that the relevant public would perceive the mark as a promotional reference to the status of an island as a hub for blockchain technology.
STELLAR allowed for Class 10 goods on appeal
The Swiss Federal Administrative Court disagreed with the strict approach followed by the Federal Institute of Intellectual Property in this case.
Wednesday, 27 October 2021
3D trademark misfires: Glock shoots too late and misses target
In this dispute between firearms company Glock GmbH and two manufacturers of replica guns, a French court of appeal has cancelled Glock’s 3D mark for the shape of its Glock 17 pistol on the ground that it lacked distinctiveness.
TTAB: reckless disregard for truth satisfies ‘intent to deceive’ requirement
In a landmark decision, the US Trademark Trial and Appeal Board has expanded the grounds on which fraud may be found by holding that proof of reckless disregard for truth or falsity may be sufficient to show an intent to deceive.
Tuesday, 26 October 2021
FRUTARIA decision: General Court considers proof of use where trademark was assigned during relevant period
The transfer of a mark cannot lead to its new proprietor being deprived of the opportunity to adduce proof of genuine use of the mark in the course of the period during which it was not the proprietor of the mark.
Transferring a parody domain name? Never ever!
Merely showing that a domain name is used to heavily criticise a trademark holder will often not be sufficient under the UDRP - as demonstrated by this decision involving the domain name ‘nevereverfx.com’.
Monday, 25 October 2021
Škoda v Škoda: limited scope of an opposition in the context of an appeal before the Board of Appeal
In these opposition proceedings between Škoda Auto and Škoda Investment, the General Court found that the partial annulment of the Opposition Division’s decision was correct in view of the scope of the opposition set out by Škoda Investment.
Accessory designer prevails in lawsuit brought by Frankie Edith Kerouac Parker’s estate
In this dispute over the use of the name Edie Parker (the first wife of Jack Kerouac and a figure of the Beat Generation), a US district court has held that the common law right of publicity cannot be used to deprive a defendant of its federally-secured trademark rights.
Friday, 22 October 2021
Grand Board of Appeal’s failure to examine pleaded ground of invalidity leads to annulment of its decision
In these long-running invalidity proceedings involving a mark consisting of the representation of chevrons between two parallel lines, the General Court has again annulled a decision of the EUIPO.
Further blow for Crocs as 3D trademark registration is declared void on appeal
Crocs Inc has been dealt another blow in its dispute with Grupo Ramos (the Dominican Republic’s largest department store), with the general director of the Patent and Trademark Office confirming that Crocs’ 3D mark for its Cayman shoe design is invalid.
Thursday, 21 October 2021
Earlier rights in the UK: validity in pending proceedings after UK withdrawal from EU
The General Court considered whether extended passing off remains a valid basis for opposition in pending appeal proceedings decided after the United Kingdom’s withdrawal from the European Union.
Federal Court rules that the variation of a plaintiff’s registered mark is not a remedy in an infringement action
In a landmark decision, the Malaysian Federal Court has ruled that a plaintiff in an infringement action is not legally obliged to consider the option of co-existence on the ground of honest concurrent use.
Wednesday, 20 October 2021
HELIOS v HEALIOS: General Court considers likelihood of confusion in the medical field
This decision of the General Court highlights that, when it comes to goods and services with a medical purpose, it might not be sufficient to argue that their ultimate purpose can overlap with their medical application in order to establish similarity.
Commercial Court issues significant decision on fake car parts
This landmark ruling of the Commercial Court in Belgrade should provide rights holders with a useful tool in their fight against fake auto parts.
Tuesday, 19 October 2021
Federal Supreme Court holds that shape of Nespresso capsules is technically necessary
The Swiss Federal Supreme Court has put an end to the long-running dispute between Nestlé and Ethical Coffee, which had launched biodegradable coffee capsules compatible with the Nespresso system.
Unearthed truth: lack of evidence from complainant means success for respondent
This UDRP decision shows that, to prove bad faith, it is crucial for complainants to establish the existence of their trademarks or their reputation at the time the disputed domain name was registered - rather than when commercial use was being made of the domain name.
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