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23 May 2017

Imposing greater pressure on IP infringers through multiple legal actions

After initiating a criminal action against an individual trademark counterfeiter, the plaintiff in a recent case filed a follow-up civil lawsuit against the counterfeiter and his company on the grounds of trademark counterfeiting and trade dress infringement. Through this civil lawsuit, the plaintiff stopped the trade dress infringement and put greater pressure on the counterfeiter.

23 May 2017

Australian courts protect HARBOUR LIGHTS trademark

On appeal to the full court of the Federal Court, Accor Australia and New Zealand Hospitality Pty Limited has succeeded in protecting the name of a residential apartment complex as a trademark. That mark has been protected in relation to services dealing with the sale, leasing and letting of those apartments and holiday accommodation services.

22 May 2017

Donburi or dog’s dinner? Zuma versus Dine in with Zuma

The Intellectual Property Enterprise Court has found that the reputation of a high-end Japanese restaurant’s trademarks would be tarnished by use of the same name on dog food, regardless of the latter's human-grade ingredients, and that the own name defence could not succeed when deployed by a dog. The case demonstrates how the courts will readily provide protection where the substantial reputation enjoyed by a high-end brand is affected by a defendant’s use in a rather different arena.

18 May 2017

USPTO steps up efforts to remove deadwood from the register; proposes “streamlined” cancellation proceedings

As part of its efforts to declutter the US trademark register, the United States Patent & Trademark Office is looking to establish a “streamlined version” of the current cancellation proceedings before the Trademark Trial and Appeal Board. Reaction to the proposal on social media has been broadly positive, with one IP expert further telling World Trademark Review that the move is a “logical” one.

05 May 2017

Entry into force of new Regulation on the Implementation of the Industrial Property Code

Following the Industrial Property Code’s entry into force at the beginning of the year, the new Regulation on the Implementation of the Industrial Property Code has now been published in the Official Gazette and has also entered into force.

03 May 2017

High Court determines appeal against refusal of SOVEREIGN trademark

The recently dismissed appeal against a hearing officer's decision to refuse the registration of the mark SOVEREIGN in respect of "gold commemorative coins" is a reminder that the threshold for success on appeal from a hearing officer – whether to the appointed person or the High Court – is high.

21 April 2017

OAPI in “period of transition” as new director general appointed; anti-Madrid collective “goes into hiding”

The African Intellectual Property Organisation has confirmed to World Trademark Review that its director general, Paulin Edou Edou, will be leaving at the end of July, with his successor beginning in August.

19 April 2017

Paris court decision shows that court proceedings against domain name holder may be useful tool to tackle identity theft

The Paris Court of First Instance has ordered the transfer of a domain name consisting of the name of a person whose identity had been misused, most likely fraudulently. The decision illustrates that court proceedings against a domain name holder may be a very useful tool to tackle identity theft – contrary to alternative dispute resolution mechanisms such as the UDRP, which often do not allow for the protection of personal names per se.

18 April 2017

Use of EUTM by third party may constitute genuine use even where proprietor's consent must be deduced

In Windrush AKA LLP v EUIPO, the General Court has upheld a decision of the First Board of Appeal of the EUIPO in which the latter had found that there was genuine use of the mark THE SPECIALS for CDs. The court found that the board had rightly deduced that there was consent on the part of the trademark owner – the founder of UK band The Specials – to use of the mark by a record company.

11 May 2017

The eyes have it

In a recent Uniform Domain Name Dispute Resolution Policy decision, a World Intellectual Property Organisation panel ordered the transfer of a domain name registered seven years ago containing ordinary English words, after the respondent confessed to knowledge of the complainant and disclaimers on the website were found to emphasise this knowledge.

17 May 2017

Dominancy test determines trademark similarity

A recent Supreme Court decision shows how the Philippines courts must look at elements of the dominancy test to determine trademark similarity. In Seri Somboonsakdikul vs Orlane SA, the Supreme Court ruled that LOLANE was not a colourable imitation of ORLANE due to distinct visual and aural differences that were discerned using the dominancy test.

17 May 2017

Proof of bad-faith registration crucial, UDRP panel rules

A Uniform Domain Name Dispute Resolution Policy panel has denied the transfer of a domain name, mainly based on a lack of evidence about the respondent’s bad faith on registering it. The decision demonstrates that when a trademark owner is not that well known, it is crucial to provide solid evidence demonstrating goodwill and reputation at the time of the registration of the domain name at issue.

15 May 2017

Research suggests budgets “holding steady” but more is being required of trademark departments

A new study from Lecorpio suggests that, for the majority of trademark teams, budgets for prosecution and policing are unchanged year on year. However, drilling down it becomes clear that many departments remain under pressure to do more with the same level of resources.

15 May 2017

Paris Court of Appeal clarifies confusion

The Paris Court of Appeal recently found that, among other things, use of the domain name '' had resulted in both trademark infringement and unfair competition in relation to the trademark COMPTOIR DES COTONNIERS. According to the court, when a domain name is not identical to a trademark, the likelihood of confusion between the two signs should be assessed. This assessment includes a likelihood of association, which should be evaluated internationally.

13 April 2017

Halving of Chinese trademark fees provides immediate costs benefit for counsel, but raises squatting concerns

Reversing a trend towards increases seen across several Asian jurisdictions of late, the China Trademark Office of the State Administration of Industry and Commerce has slashed user fees by half. While the reduction is welcome in terms of budgets, many trademark counsel will be concerned about a potential increase in indirect enforcement costs should squatters try to take advantage of the lower fees.