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14 June 2010

IP attorneys reminded that creative arguments must have reasonable basis

In Franklin Mint Company v Manatt Phelps & Phillips LLP, the Franklin Mint Company, which is known for its commemorative plates, has succeeded in its malicious prosecution claim against the lawyers representing the estate of the late Princess Diana. The case presents a cautionary tale for trademark lawyers: creative arguments must have a reasonable basis in the fundamental principles of trademark law.

11 June 2010

High Court upholds trademark co-existence agreement

In Omega Engineering Inc v Omega SA, the High Court has upheld the terms of a trademark co-existence agreement between two businesses using the same name by preventing one party from opposing a subsequent trademark application by the other. This judgment is encouraging to businesses that have entered into co-existence agreements in the past.

10 June 2010

Section 18 unavailable to require disclaimer beyond five-year anniversary

In Montecash LLC v Anzar Enterprises Inc, in a precedential opinion addressing a question of first impression, the TTAB has held that Section 18 of the Lanham Act, which grants the TTAB authority to restrict a registration, could not be applied to require the disclaimer of a generic term in a registration existing on the Principal Register for more than five years.

09 June 2010

OHIM decision annulled in dispute between STAR marks

In Wessang v OHIM, the General Court has annulled a decision of the Board of Appeal of OHIM in which the latter had found that there was no likelihood of confusion between the marks STAR FOODS and STAR SNACKS. Among other things, the court found that the board had erred in finding that, because the marks had a weak distinctive character, the differences between them were sufficient to neutralize the similarities.

08 June 2010

WIPO decision highlights cumulative requirements of third limb of UDRP

In Heraeus Kulzer GmbH v Stoll, German company Heraeus Kulzer GmbH, the owner of several VENUS marks for dental products, has failed to obtain the transfer of the domain name '' under the UDRP. The WIPO panel considered that, although Heraeus had established bad-faith use, it had failed to establish the cumulative requirement of bad-faith registration, thus failing to establish the third limb of the UDRP.

03 June 2010

Automobile giant cannot monopolize letter 'T'

In Super Cassettes Industries Ltd v Union of India, the Delhi High Court has set aside an order of the Intellectual Property Appellate Board and affirmed an order of the deputy registrar, holding that there was no likelihood of confusion between Super Cassettes' T-SERIES mark and Tata's T mark.

03 June 2010

Gillette's stylized G mark held to lack distinctiveness

The Administrative Court has upheld a decision of the Federal Institute of Intellectual Property refusing to register Gillette’s stylized 'G' for goods in Classes 3 and 8 on the grounds that it lacked distinctive character. Among other things, the court held that Gillette was required to prove that its stylized 'G' had acquired secondary meaning - and not merely that it had been frequently used in connection with the name Gillette.

13 April 2010

Draft amendment to Trademarks and Geographical Indications Law adopted

Bulgaria’s National Assembly has adopted the Draft Law Amending the Law on Trademarks and Geographical Indications. Under the new system, trademark applications will be examined on absolute grounds only and third parties will have three months from the date of publication to file a written opposition. The law will enter into force in June this year.

12 April 2010

Board exceeds jurisdiction by limiting scope of protection of opponent's mark

In Molson Canada 2005 v Anheuser-Busch Incorporated, the Federal Court has ruled that the Trademarks Opposition Board had exceeded its jurisdiction by limiting the scope of protection afforded to Molson Canada 2005’s trademark in its opposition against the registration of the mark BUDWEISER (and design) by Anheuser-Busch Incorporated for use in association with beer and various merchandising products.

09 April 2010

No likelihood of confusion found despite identical goods

In Mirto Corporación Empresarial SL v OHIM, the General Court has upheld a decision of the Second Board of Appeal of OHIM finding that there was no likelihood of confusion between MIRTILLINO and MIRTO for identical goods. Among other things, the court held that the additional syllables in MIRTILLINO distinguished it from MIRTO, even if the first syllable was what most attracted the attention of the average consumer.

08 April 2010

Trademark law reform enacted

The Norwegian Parliament has passed the bill on the new Trademarks Act. One of main novelties is the introduction of a procedure for the administrative re-examination of registered trademarks. It is hoped that the procedure will represent a cheaper and simpler way of invalidating marks. The act will enter into force no later than July 1 2010.

31 March 2010

Mark will not be associated with eponymous Belgian town

The Board of Appeal has annulled a decision of the Estonian Patent Office in which the latter had refused to register the trademark SPA for mineral and aerated waters. Among other things, the office had found that the word 'spa' designated the geographical origin of the goods - namely, the Belgian town of Spa.

29 March 2010

Administrative opposition procedure introduced

Regulation 33/2010, which implemented Legislative Decree 30/2005 (the Italian Industrial Property Code), came into force on March 10 2010, exactly five years after the legislative decree was issued. The main innovation is the introduction of an administrative opposition procedure for domestic trademark applications inspired by opposition proceedings at the European level.

26 March 2010

Ex officio border measures implemented

Pursuant to its obligations under the Free Trade Agreement with the United States, the Peruvian government has implemented ex officio border measures. Among other things, if Customs has reasons to presume that certain goods are counterfeit, pirated or confusingly similar to goods protected by IP rights, it may order the suspension of clearance of the goods.

26 March 2010

Descriptive use of registered trademark allowed

In Nature's Blend Pty Ltd v Nestlé Australia Ltd, the Federal Court of Australia has ruled that Nestlé Australia Ltd's use of the phrase 'luscious lips' for its Retro Party Mix confectionery range was purely descriptive of the relevant products and, therefore, did not infringe the trademark LUSCIOUS LIPS for confectionery products.