Wednesday, 01 June 2022
Court of Appeal reverses targeting ruling in favour of brand owners
The decision will no doubt become the new ‘go-to’ case on targeting in the United Kingdom.
Board of Appeal upholds opposition against mark containing name of government’s official seat
Despite the shortcomings of the opposition filed by Estonia’s Government Office, the Board of Appeal found that the mark STENBOCK constituted “another symbol” the registration of which would be contrary to public interest under Article 9(1)(9) of the Trademark Act.
Tuesday, 31 May 2022
The MILANO PIZZERIA case or the perils of improper trademark licensing
The case highlights the risks that brand owners face if their licensing arrangements fall short of the requirements set out in the Trademarks Act.
Déjà vu decision on likelihood of confusion
The US Court of Appeals for the Fifth Circuit found that this dispute between Springboards to Education and a public school district in Texas was “like déjà vu all over again”.
Monday, 30 May 2022
Fairfax & Favor outboot Bruar
The case is notable in that the claimant was successful in its claims for infringement of both its registered Community design and UK unregistered design rights.
CIPO introduces automated pre-assessment in national unexamined trademark applications
Applications will be assessed against a pre-approved list of goods and services, and applicants will be receiving pre-assessment letters informing them of the automated analysis results.
Friday, 27 May 2022
General Court rules on complementarity between goods in Classes 3 and 5
While the goods covered by the mark applied for in Class 3 differed from those covered by the earlier mark in Class 5 due to the latter’s therapeutic indication, they shared the same objective and were likely to incorporate the same ingredients.
UDRP: proof of targeting essential for acronym trademarks
It is crucial to prove that a disputed domain name was registered to target a particular trademark owner, especially when it consists of an acronym that may be subject to various interpretations.
Thursday, 26 May 2022
“Deliberate concealment” tactic leads Court of Appeal to refuse permission for otherwise legally legitimate amendments to case
The fact that an amendment advances a case which is permissible under the Trademarks Act is relevant, but not determinative
Success for Abercrombie & Fitch as counterfeit products are withdrawn and destroyed
Following the discovery that a chain of hypermarkets was selling counterfeit footwear bearing its trademarks, Abercrombie & Fitch was successful in obtaining the withdrawal of the infringing products from the market.
Wednesday, 25 May 2022
General Court confirms that mark consisting of cross on side of sports shoe is distinctive
The case highlights that nothing prevents a distinctive sign from also serving other purposes, in particular decorative purposes.
End of an era: termination of 100-year-old agreement between Germany and Switzerland
The termination of the agreement will have consequences on the genuine use of trademarks in the two countries.
Tuesday, 24 May 2022
Toy manufacturer does not have a FUNTIME at the IPEC
Trademark owners should proceed with caution when alleging trademark infringement arising from use of a similar mark by a licensee.
IP process changes and fee updates – what you need to know
This update highlights some of the key changes due to be introduced by IPOS, including a new partial acceptance mechanism for national trademark applications.
Monday, 23 May 2022
Levi Strauss & Co’s ‘arcuate stitching design’ mark declared as well known
In a victory for American clothing giant Levi Strauss & Co, the Delhi High Court granted a permanent injunction restraining the defendants from using the ‘arcuate stitching design’ mark on their goods, and declared the mark to be well known.
UDRP: it all boils down to evidence
The case serves as a reminder of a basic, yet crucial principle: any claim must be substantiated by supporting evidence.
Friday, 20 May 2022
General Court overturns Board of Appeal decision in TAXMAN v TAXMARC case
The Board of Appeal of the EUIPO committed a manifest error of assessment in rejecting PricewaterhouseCoopers Belastingadviseurs NV’s request for a suspension of proceedings.
Criminal court requires defendant to pay bond of over €1.5 million during preliminary investigation phase
Although other criminal courts have used this measure in similar circumstances, setting the defendant a bond in order to meet any possible financial liabilities is still rather unusual.
Thursday, 19 May 2022
SMARTTHINQ v SMARTTHING, or the importance of word elements in disputes involving figurative trademarks
The decision confirms the factors to be taken into consideration in comparing figurative marks containing word elements.
Myanmar changing to ‘first to file’ for trademarks - what you need to know and do
Any businesses with existing trademark protection in Myanmar should take steps to ensure that a new application is filed within the priority period to maintain their rights.
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