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21 July 2006

Practice notice on registrability of non-English words issued

Following the recent ECJ decision in Matratzen Concord AG v Hukla Germany AG, the UK Patent Office has released a Practice Amendment Notice (PAN 12/06) on the registrability of non-English words. The notice seeks to provide guidelines on how the registrar is likely to respond to certain applications to register non-English words as trademarks.

14 July 2006

Use of mark by US parent company allows domain name transfer

A Canadian Internet Registration Authority panellist has ordered the transfer of the domain name '' to the complainant, despite the fact that it did not own a corresponding registered trademark. The panellist held that the complainant had rights in the mark by virtue of use in the trade name of the complainant's US parent company.

12 July 2006

Use of MICHELIN and third-party marks on clothing not infringing

The HsinChu District Court has dismissed a trademark infringement complaint filed by Michelin, holding that use of the MICHELIN mark, along with various other third-party marks, on clothing did not constitute trademark infringement because the trademarks were serving not as badges of origin but as decoration.

10 July 2006

Sweet shape mark applications leave bitter taste

In August Storck KG v OHIM, the European Court of Justice has upheld the decisions of the OHIM to reject applications to register the shape of a light brown sweet - a round form with a top rim and a crater-shaped pit in the middle - and the two-dimensional image of a sweet wrapping. The court held that both marks lacked inherent and acquired distinctiveness.

20 April 2006

Use of Christmas tree shape cut back by High Court

In Julius Sämann Ltd v Tetrosyl Ltd, the High Court of England and Wales has ruled that the shape of an everyday object registered as a trademark may be infringed by use of a conceptually similar but visually different depiction of that same object. In so doing, the court held that the use of a Christmas tree shape for an air freshener infringed the rights of the owner of a fir tree shape mark for the same type of goods.

11 April 2006

Landmark building protected by trademark law

The Taiwanese Intellectual Property Office has issued an opinion recognizing that the owners of the Taipei 101 building, the tallest building in the world, have exclusive rights in the use of the configuration of the building based upon a three-dimensional mark registration in various classes of the Nice Classification.

07 April 2006

Use of identical word in ad campaign for identical services is fair

The Venezuelan antitrust and unfair competition authority has rejected a complaint against the use by Telcel of the Spanish personal pronoun 'me' in an advertising campaign. The authority found, among other things, that while Telcel's use of the pronoun held some similarities with the complainant's use of the same pronoun in its campaign for identical services, graphical elements precluded any likelihood of confusion.

21 March 2006

Refusal of AOL's INSTANT MESSENGER marks overturned

The Trademark Trial and Appeal Board has reversed a decision to refuse registration for a series of four marks containing the term 'INSTANT MESSENGER'. The TTAB held that the applicant, America Online Inc, had provided sufficient evidence to (i) rebut the examining attorney's prima facie case that the marks were generic, and (ii) establish that the marks had acquired distinctiveness.

17 March 2006

Debenhams roars to victory in TIGERLILY Case

The registrar of trademarks has allowed the registration of the mark TIGERLILY for goods in Class 25 of the Nice Classification. The registrar concluded that the mark was unlikely to cause confusion with the prior registered marks TIGER ASICS CORPORATION, ASICS TIGER and ASICS TIGER (and cross line device) used for goods in the same class.

16 March 2006

Patent decision clarifies rules of procedure for all IP litigation

In a recently published decision, the Swiss Federal Supreme Court has clarified (i) the standards applicable to courts when providing the reasons for the grant or denial of a preliminary injunction, and (ii) issues relating to the use of expert evidence, particularly in cases of a highly technical nature. Although the court's decision related to a patent, the principles that it established are applicable to all types of industrial property right.

16 March 2006

OHIM Board of Appeal incorrect to bring opposition to an end

In Dami v OHIM, the European Court of First Instance has overturned an OHIM Board of Appeal's decision, in which it interpreted a joint application to stay an opposition proceeding as a withdrawal of the opposition. Among other things, the court held that the board's assertion that the parties had expressed a common intention of bringing the proceedings to an end had no factual basis.

15 March 2006

New procedure allowing objection to company names on its way

The Company Law Reform Bill has had its second reading before the House of Lords and will now go to a Grand Committee for debate. Among other things, the bill proposes a new right to object to a company name on the basis of goodwill in an identical or similar name. It will mean that a party may be able to force a company to change its name, without the need to litigate.

14 March 2006

Copyright may help to prevent parallel imports

In Euro Excellence Inc v Kraft Canada Inc, the Federal Court of Appeal has upheld a lower court's decision to stop the importation of grey market chocolate bars. The case marks a distinct shift in the Canadian courts' approach to grey market imports and suggests that IP right owners may be better off relying on copyright rather than their trademark registrations when seeking to prevent parallel imports.

13 March 2006

Changes to TTAB proceedings mooted

The US Patent and Trademark Office is seeking comments on a proposed amendment to the rules for Trademark Trial and Appeal Board inter partes proceedings. Among other things, the proposed amendment would see the TTAB adopt a modified version of the initial disclosure requirement set out in the Federal Rules of Civil Procedure, reducing the number of interrogatories permitted.

08 March 2006

Community 2-D mark refused despite German registration

The European Court of First Instance has upheld a decision to refuse Henkel KGaA's application to register the shape of a multi-coloured dishwasher tablet as a Community two-dimensional device mark. The court's decision contrasts with that of the German Federal Patent Court, which allowed registration of an identical mark in 1999.