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15 April 2019

A LIP TATTOO too easily erased? LVMH successfully defends suit against its use of DIOR ADDICT LIP TATTOO

LVMH has defeated an action brought by local cosmetics manufacturer Shinzens, owner of the mark LIP TATTOO, against LVMH’s use of the mark DIOR ADDICT LIP TATTOO in Malaysia.

15 April 2019

General Court sheds light on assessment of similarity of goods

In IQ Group Holdings Bhd v EUIPO, the EU General Court has provided valuable guidance on the assessment of the similarity of goods and services, especially with regard to distribution channels and the sale of products online.

12 April 2019

General Court: Board of Appeal wrongly assessed dominant element of composite sign

In Julius-K9 Zrt v EUIPO, the EU General Court has clarified how to assess the dominant and distinctive character of the elements that make up a composite trademark in the context of an opposition based on Article 8(1)(b) of Regulation 2017/1001.  

12 April 2019

Italy implements EU Trademarks Directive and further strengthens trademark protection

Legislative Decree 15/2019, which implements the EU Trademarks Directive (2015/2436), entered into force on 23 March 2019. This update reviews the main novelties that mark owners and practitioners should be aware of.

12 April 2019

Serial trademark filer Ikuhiro Ueda speaks out: “I am the best troll”

Yesterday we reported on notorious trademark filer Ikuhiro Ueda, who has personally filed over 100,000 trademark applications. Today, in an exclusive interview with WTR, Ueda claims his filings are part of an ambitious plan to overhaul the global IP system.

11 April 2019

Success for BMW as German court bans rim manufacturer from imitating famous automotive trademarks

Car manufacturer BMW has successfully prevented Finland-based rim manufacturer Oy from using signs similar to its famous automotive trademarks for car parts.

11 April 2019

The Ueda Files: the world’s most prolific trademark filer and a conundrum for brands

An incredibly prolific trademark filer in Japan, Ikuhiro Ueda, is causing headaches for brands, according to experts. In an exclusive investigation from WTR, we reveal the staggering scope of this portfolio-building exercise.

11 April 2019

Case highlights difficulty in establishing use-based rights in Denmark under new Trademark Act

Denmark’s amended Trademark Act came into force at the start of 2019, maintaining the possibility of establishing a trademark right through use - in particular, parties must be able to prove that such use is of more than local significance. This is something that caused difficulties in a recent case involving two similar restaurant marks.

10 April 2019

BOOKING.COM is not generic: Fourth Circuit addresses protection for ‘.com’ trademarks

In BV v USPTO, the US Court of Appeals for the Fourth Circuit has weighed in on the somewhat controversial issue of the genericness of a mark that contains a TLD such as ‘.com’.

10 April 2019

Vietnam goes further in process to implement CPTPP requirements

In order to comply with the requirements of the Comprehensive and Progressive Agreement for Trans-Pacific Partnership, a draft law amending certain provisions of Vietnam’s IP Law has been prepared and released for public comments.  

09 April 2019

Compumark launches all-in-one protection service '' as news emerges of prospective sale of Trademarkia (updated)

Compumark has launched a trademark protection tool with the promise to make “safeguarding brands easy and affordable”, with the move representing another entrant into the competitive online trademark filings market.

09 April 2019

Trademark squatter defeated by US pet food brand’s prior reputation, with Taobao’s assistance  

In Elma v Shen Pengwei, online shopping platform Taobao has offered its assistance to collect data relating to the sale of US pet food manufacturer MI Industries’ products by retailers in order to defeat an infringer.

08 April 2019

Constitutional Court weighs trademark rights against freedom of expression

Following an application by an individual, the Turkish Constitutional Court has considered whether the freedom of expression is violated by an order blocking the access to a website for an indefinite period of time. 

08 April 2019

Appointed person serves final decision in tea dispute

A trademark dispute between luxury tea companies Mariage Frères and TWG Tea Company over the mark SAKURA SAKURA! in the United Kingdom has been settled by a decision of the appointed person.

05 April 2019

Blow for Novartis as SMARTSURFACE mark is rejected as being descriptive

In a blow to the Swiss pharmaceutical giant, the EU General Court has upheld a decision of the EUIPO Second Board of Appeal finding that Novartis AG’s word mark SMARTSURFACE was descriptive in respect of contact lenses in Class 9.