In the first of a two-part series, we outline the legislative framework for franchising in nine jurisdictions across Asia and South America.
The Polo/Lauren Company has failed to invalidate the Royal County of Berkshire Polo Club's registration for a composite mark containing the word 'polo' and the device of a polo player.
WIPO has released its latest report into global IP activity, revealing a significant rise in filing activity. Most of the growth can be attributed to China’s continued domination.
Apple Inc opposed Xiaomi Singapore Pte Ltd's application to register the trademark MI PAD in Classes 9 and 38. The registrar examined the application pursuant to the Trademarks Act, finding that the mark was aurally and visually dissimilar to Apple’s IPAD mark and that there was no likelihood of confusion.
Van Cleef & Arpels SA, which supplied fine jewellery and luxury watches, was the proprietor of the MYSTERY SET trademark in Class 14 registered for “jewellery, watches”. FMTM Distribution Ltd sought to revoke the mark on the grounds that it had not been put to genuine use and that the mark was descriptive.
Claims that the the mark BIG BOX should be declared invalid ab initio under Sections 7(1)(b) (c) and (d) of the Trademarks Act have failed, after the IP adjudicator considered that the applicant had not succeeded in satisfying the burden of establishing one of the three grounds of invalidation.
In 2016 Caesarstone appealed the decision of the principal assistant registrar to allow an opposition filed by Ceramiche Caesar against an application for its house mark. The High Court upheld the appeal, but the Court of Appeal disagreed with the High Court’s rulings. This decision clarifies that, notwithstanding the differences in length and structure, the distinctive and dominant component of a mark would still be the core consideration in determining similarity.
The Court of Appeal has upheld the decision that Nestlé’s two-fingered and four-fingered KIT KAT shape marks lack inherent distinctiveness as they do not represent a significant departure from the norms of chocolate confectionery. The decision emphasises the fact that, unless there is evidence to prove that consumers are accustomed to recognising the shape of a product as a badge of trade origin, even evidence of substantial use is unlikely to assist.
A registrar has allowed Bentley Motor’s application for revocation of Aucera’s BENTLEY mark to succeed on the grounds of non-use. The application was successful largely due to the lack of specificity of the evidence provided by Aucera. The case highlights that proprietors in Singapore should use their registered trademark, otherwise it will be open to challenge by another party.
The IP court in Taiwan has ruled that Ya-E International, a former licensee of Crocodile International, should pay damages of NT$2,805,222 (US$95,416) for trademark infringement and breach of a trademark licence agreement.
In Polo/Lauren Company LP v United States Polo Association, the Singapore High Court has upheld a decision of the Trademark Registry adjudicator who had refused an opposition by Polo Ralph Lauren against a trademark application by United States Polo Association.
In Formula One Licensing BV v Idea Marketing SA, the High Court has dismissed Formula One Licensing BV’s case on all grounds and allowed Idea Marketing SA’s application for the mark F1H20 to proceed to registration. Among other things, the court held that there was insufficient evidence to support a finding that Formula One Licensing had acquired goodwill in the F1 mark prior to the date of application of the F1H20 mark.
In Global Tobacco Manufacturers v Al Mahamid, the Court of Appeal has dismissed an appeal against the order of the High Court to invalidate the figurative mark MANCHESTER for cigarettes based on a likelihood of confusion with the earlier figurative mark MANCHESTER, which also covered cigarettes. Among other things, the Court of Appeal held that actual confusion is not a necessary element of the cause of action.
In Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd, the High Court has upheld a decision of the registrar in which the latter had dismissed an opposition by Rovio, the owner of the ANGRY BIRDS mark, against the registration of the figurative mark ANGRY BITE in Class 30. One of the issues before the court was whether two earlier registered marks may be combined into a composite whole for the purposes of comparison with the opposed mark.
The Intellectual Property Office has dismissed Converse Inc’s opposition to the registration of the mark CLASSIC JAZZ STAR (and star device) in Class 25. Among other things, the office found that there was no likelihood of confusion between the mark applied for and Converse’s mark CONVERSE ALL STAR (and star device).