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20 November 2008

LAURA BIAGOTTI AQUA DI ROMA held to be deceptive

The Swiss Administrative Court has affirmed a decision of the Federal Institute of Intellectual Property in which the latter had refused to extend protection to Switzerland of the international registration for the figurative mark LAURA BIAGOTTI AQUA DI ROMA for perfumery on the grounds that such registration would be deceptive for goods not originating from Italy.

18 November 2008

‘’ extension launched

EuroDNS, the Luxembourg-based registrar responsible for the Dutch ‘’ domain name space, has announced the launch of ‘’ through a sunrise period divided into two phases. During the first phase, which starts today, owners of a ‘.nl’ domain name have the right to register the equivalent of that domain name under ‘’ with priority.

17 November 2008

IMPI recognizes 12th appellation of origin

The Mexican Institute of Industrial Property has issued a declaration of protection of the appellation of origin 'chile habanero de Yucatán' (chilli pepper from the Mexican state of Yucatán). IMPI has also recognized the Cuban appellation of origin ‘habanos’ for cigars produced in Cuba after refusing to do so for 40 years.

13 November 2008

VOGUE mark partially invalidated

The Polish Patent Office has partially invalidated Advance Magazine Publishers Inc's registered trademark VOGUE for goods in Classes 18 and 25 of the Nice Classification (including clothing and shoes). Among other things, the office held that the publishing of a fashion magazine did not provide evidence of use of the mark for such goods.

13 November 2008

AFRI-COLA registered for certain goods

The Swiss Administrative Court has partially overturned a decision of the Federal Institute of Intellectual Property and has allowed the registration of the trademark AFRI-COLA for certain goods in Class 30 of the Nice Classification on the grounds that the mark did not function as a geographical denomination with respect to such goods.

13 November 2008

Bad faith recognized as grounds for invalidation

The General Assembly of the Court of Appeals has held that a registered trademark may be invalidated on the grounds of bad faith. The general assembly stated that even though bad faith is not listed in the grounds for invalidation in Article 42 of Decree Law 556, a trademark may be invalidated based on the principles of good faith set forth in Article 2 of the Civil Code.

02 July 2008

Revision of company names legislation will affect trademark law

Within the context of the revision of the Swiss Stock Corporation Law provision on limited liability companies, the law on company names is due to be substantially revised. Under the new law, it will be possible to register descriptive company names with the Register of Commerce, which will have an impact on trademark registration strategies.

02 July 2008

Name of television series can constitute trademark

The Trademarks Office has dismissed the opposition filed by Home Box Office Inc, the distributor of the Sex and the City series, against the registration of the trademark SIX IN THE CITY for dating services. The hearings officer nevertheless acknowledged the fact that the name of a television series can constitute a trademark.

01 July 2008

CFI chastises OHIM Board of Appeal in GABEL Case

In Gabel Industria Tessile SpA v OHIM, the CFI has reprimanded the Second Board of Appeal of OHIM for its handling of the case. The CFI held that the board had failed to rule on the action brought before it insofar as the action was directed at the refusal of the Opposition Division to register the mark GABEL in respect of goods in Class 24.

27 June 2008

European Commission takes France and Germany to task

In Commission v France and Commission v Germany, the ECJ has held that France had failed to meet its obligations under the Community Design Regulation and that Germany had failed to take the necessary steps to comply with the IP Rights Enforcement Directive. Both France and Germany took measures shortly after the decisions were issued, which shows how effective such judgments can be.

27 June 2008

Lesters Delicatessen enjoined from using Lesters name

In Lesters Foods Ltd v Lesters Delicatessen and Hot Smoked Meat Inc, the Quebec Superior Court has granted a permanent injunction preventing Lesters Delicatessen and Hot Smoked Meat from using the name Lesters for the sale and marketing of smoked meat to the wholesale sector. The court's ruling with regard to damages is inconsistent with the recent appellate ruling in Nissan Canada.

25 June 2008

Measures against ambush marketing at Beijing Olympics announced

In order to protect the rights of the official sponsors of the Beijing Olympics and the Olympic brand itself, the Beijing Olympics Organizing Committee for the Games of the XXIX Olympiad has announced the implementation of a number of measures against ambush marketing. Among other things, all prominent advertising sites in Beijing will be controlled and priority will be given to Olympic sponsors.

20 June 2008

GALVALLOY and GALVALLIA are confusingly similar, says CFI

In Usinor SA v OHIM, the CFI has annulled a decision by the Board of Appeal of OHIM in which the latter had upheld an opposition to the registration of the mark GALVALLOY. The court held that there was a likelihood of confusion between GALVALLOY and the earlier mark GALVALLIA for galvanized metals, notwithstanding - or perhaps because of - the specialized nature of the relevant public.

30 September 2008

NAKED not registrable for condoms

The Hong Kong Trademarks Registry has refused to register the trademark NAKED for condoms on the grounds that it was descriptive and lacked distinctiveness. Among other things, the registrar held that consumers were likely to perceive the mark as describing a characteristic of the goods, rather than as a badge of origin.

26 September 2008

AKAI cancelled on unfair competition grounds

In Akai Electric Co Ltd v Akai Universal Industries Ltd, the Presidium of the Higher Arbitration Court of the Russian Federation has ordered the cancellation of the trademark AKAI on the grounds that the registration infringed the rights of well-known Japanese company Akai Electric Co Ltd in its company name.