Work Area: Trademark law

Latest content

Donut King’s opposition to e-cigarette mark fails at the UKIPO

Donut King’s opposition on the grounds of a likelihood of confusion proved futile despite a finding of similarity between the marks. A valuable reminder that to succeed in an opposition based on a likelihood of confusion, similarity between marks is not sufficient when the goods are wholly dissimilar.

16 June 2022

Purchase of search engine ads for word marks is sufficient to constitute infringement

A US court has found a defendant to be “purposely and intentionally deceptive and misleading” after buying advertisement space under a trademarked term, even though the goods advertised were not infringing. Such rulings are inconsistent across the United States; however, there is enough precedent for brands to take note.

16 June 2022

“Raised the bar” – Christian Louboutin red sole rejection makes colour marks in Japan more difficult to obtain

The JPO Appeal Board has rejected a red colour trademark filed by Christian Louboutin, in a blow to its long-running bid to secure protection for its iconic red sole.

15 June 2022

What brand professionals need to know about Only Fools and Horses decision at UK court

Following the recent Only Fools and Horses decision at the UK Intellectual Property Enterprise Court, experts explain why it should be on the radars of UK brand practitioners.

13 June 2022

How strong trademarks such as NIKE and MARLBORO can fail in cybersquatting cases

Past cases warn would-be complainants of the need to conduct a thorough investigation into a domain name registrant’s motives before filing a UDRP complaint. Where a registrant holds a domain for its generic value, rights holders are unlikely to succeed even if they have strong marks.

09 June 2022

IP Court upholds refusal to undermine US mark

The IP Court has rejected an appeal by a Russian entrepreneur who argued that the similarity of their mark to one owned by US company Caterpillar Inc should not be taken into account following a government order on foreign states that commit unfriendly actions against Russia.

09 June 2022

Amazon Technologies loses out on distinction between suggestive or descriptive

The IP and Commercial Court has upheld the Taiwan IP Office’s rejection of Amazon Technologies’ mark – an invented word that is simply the combination of two dictionary words – finding it descriptive rather than suggestive.

09 June 2022

Taiwan passes amendments to Copyright Act, Trademark Act and Patent Act to strengthen IP protection

This update provides an overview of the key amendments to the laws, including the fact that criminal liability now applies to certain preparatory and contributory acts of trademark infringement.

07 June 2022

INTA sides with COVIDIOT in amicus brief on morality and freedom of speech

INTA has filed an amicus brief before the EUIPO Grand Board of Appeal, proposing a three-step test for when a trademark is contrary to accepted principles of morality under Article 7(1)f of the EU Trademark Regulation.

06 June 2022

TRUMP TOO SMALL and the problem of trademark merchandising

In an exclusive column, Michael Grynberg, professor of law at the DePaul University in Chicago, looks at how a controversial trademark decision relates to brand merchandising – and why it matters.

28 May 2022

Unlock unlimited access to all WTR content