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08 June 2017

Going it alone: Cayman Islands to create local trademark registry, further calls to join Paris Convention

The new Cayman Islands trademarks law will be implemented on August 1, transforming how international brand owners attain protection in the Caribbean jurisdiction. 

31 May 2017

Société Elmar Wolf opposes animal head application

In Environmental Manufacturing LLP v EU Intellectual Property Office (EUIPO), the EU General Court confirmed a decision rendered by the EUIPO First Board of Appeal that two signs representing the head of an animal were visually similar to an average degree under Article 8(1)(b) of the EU Trademark Regulation.

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.

24 April 2017

No protection in Switzerland for obscene trademarks

The Swiss Administrative Court recently confirmed a Federal Institute of Intellectual Property decision denying protection to an obscene trademark, as it was considered contrary to morality. The decision highlights that the morality standard in Switzerland remains high, even though the court highlighted that the understanding has been relaxed in recent years.

27 February 2017

Companies Commission prohibits corporate names which may mislead as to identity of company

The Companies Commission of Malaysia has issued the Guidelines on Company Names, which apply to all applications for registration of the name for incorporation of a company or a change of corporate name. In practice, the CCM now prohibits applicants for registration of a new corporation or business from adopting a name which is identical to a registered trademark.

24 February 2017

Professor slams ‘pro plain packaging for alcohol’ media reports, calls for more research into warning labels

A new study which looks at the effectiveness of warning labels on alcoholic products has slammed media reports claiming that it is advocating for plain packaging. Talking to World Trademark Review, Matthew Field, a professor of psychology at the University of Liverpool, claims the study has been ‘misrepresented’ by the media and voiced doubt that plain packaging would ever be implemented on alcoholic or sugary products.

02 March 2017

Trademark Office registers colour orange for bakery products

The Trademark Office has registered the colour orange for cakes, biscuits and pastries in the name of Productos Ramo SA, finding that the colour was sufficiently distinctive to allow consumers to associate it with a specific commercial origin. Although Andean legislation establishes that only a “colour delimited by a shape” can be registered as a trademark, the decision shows that the office has become more and more flexible with regard to the shape provided with the application.

01 March 2017

After calling out “malicious” infringement complaints, Alibaba now points the finger at China's “ambiguous counterfeiting laws”

E-commerce giant Alibaba has criticised China’s IP laws and enforcement infrastructure, calling on authorities in its home country to impose stricter criminal penalties for counterfeiting amid mounting disapproval of the company’s own stance on the issue.

31 March 2017

General Court: no likelihood of confusion between figurative 'e' marks for certain energy-related goods and services

In Edison SpA v EUIPO, the General Court has confirmed that there was no likelihood of confusion between two figurative marks consisting of a stylised letter ‘e’ for certain energy-related goods and services. Among other things, the court agreed with the Board of Appeal’s finding that the relevant public would not base its purchasing decision exclusively on a commonly used abbreviation in the energy market but, rather, on the specific stylisation given to the letter ‘e’.

15 March 2017

A quarter million in punitive damages upheld in Chanel counterfeit appeal

In Lam v Chanel, the Federal Court of Appeal has confirmed awards of compensatory and punitive damages, plus costs, for four instances of selling counterfeit CHANEL goods between 2011 and 2013. This decision represents an important tool in the arsenal of rights holders seeking restitution from sellers of counterfeits, especially recidivist infringers.

23 March 2017

15 years at the top: China’s trademark office received a record-breaking 3.7 million applications last year

The State Administration of Industry and Commerce (SAIC) – the regulatory body that encompasses China’s national trademark office – announced some headline figures for 2016 yesterday. China continues to lead the world in trademark filings and year-to-year growth shows no sign of slowing down.

13 March 2017

Federal Supreme Court: forum delicti requires specific proof of actual or imminent harmful act in relevant territory

The Federal Supreme Court has ruled that, for a court to have jurisdiction based on forum delicti, a harmful act must have actually taken place, or be imminent, in the territory of that court. As the claimant was unable to provide sufficient proof of an infringement within the relevant territory, its claim of trademark infringement and unfair competition was dismissed due to a lack of jurisdiction.

28 February 2017

Supreme Court invalidates registration for ROUTE 66

The Supreme Court has found that the registration of the mark ROUTE 66 for certain tourism-related goods and services was invalid. Among other things, the court found that the average Norwegian consumer would perceive ROUTE 66 as a geographical place. The fact that this road stretch had lost its formal status as part of the US highway system did not imply that it could no longer be considered as a geographical place.

10 April 2017

Design patent cancelled based on earlier trademark registration

The board of appeal has cancelled a design patent for a sweet wrapper bearing the Russian word for 'Africa' based on an earlier figurative trademark containing the Russian word 'Liovushka' ('pet lion') for sweets in Class 30. Among other things, the board found that the dominant features of the design patent and the trademark produced the same general visual impression.

17 February 2017

Moscow Arbitration Court issues unexpected decision in domain name case

The Moscow Arbitration Court has dismissed an infringement action filed by OSRAM GmbH, the owner of the international mark LEDVANCE, regarding the domain name 'ledvance.ru' because the limitation period had expired. Surprisingly, the court found that OSRAM should have searched the directory of '.ru' domain names between December 2010 and December 2013 and that, by not filing an infringement action within that period, it had lost the right to seek protection in court.