Thursday, 20 June 2024
Uganda
Anton Piller order issued in trade secrets case
While the court recognised that an Anton Piller order is an extreme measure, it found that the conditions for issuing such an order were met in this case.
Japan
P&G fails to register 3D shape of SK-II bottle
The JPO Appeal Board notably highlighted the consistent of use of distinctive word elements on the bottles of SK-II facial moisturisers.
Wednesday, 19 June 2024
European Union
TRUMP opposition decision focuses on evidence of use of prior marks
DTTM Operations LCC, which manages Donald Trump’s IP rights, was partially successful in opposition proceedings against a German businessman’s application for TRUMP.
South Korea
New consent letter system: guidelines for applicants
South Korea’s long-awaited letter of consent system was introduced on 1 May 2024. This update highlights what applicants should bear in mind to ensure that a consent letter is accepted.
Tuesday, 18 June 2024
Turkey
Court of Cassation decision shows importance of trademark use to enjoy protection based on ‘vested rights’ principle
The court considered whether the earlier mark fulfilled the five-year use requirement – and not only whether it had been registered for five years – to decide whether there was a vested right in favour of its owner.
International
Domain names consisting of dictionary words: the ‘motherhood.ai’ case
The decision serves as a reminder that trademark owners should carefully assess their legal strategies and evidentiary support when engaging in UDRP proceedings.
Monday, 17 June 2024
European Union
General Court criticises Board of Appeal’s findings in CHIQUITA QUEEN case
The reputation acquired in the market by a word element in a trademark application may be relevant when assessing the likelihood of confusion with an earlier mark.
Lithuania
BOTTLERY owner successfully invalidates BOTELLA mark
In a dispute between MV Group, a leading wholesaler in the Baltic States, and AIBĖ, the largest alliance of retailers in Lithuania and Latvia, the Appeals Division has found that the figurative marks BOTTLERY and BOTELLA were confusingly similar.
Friday, 14 June 2024
United Kingdom
High Court gives preliminary ruling on comparative advertising dispute
The decision highlights the importance of considering implied – as well as express – comparisons when deploying comparative advertising.
Peru
Trademark Office reports positive results in fight against counterfeiting
The report also debunks common myths and misconceptions about counterfeiting and piracy.
Thursday, 13 June 2024
Belgium
Brussels courts ban rebranding of generic parallel imports
These decisions are the first by national courts to interpret the CJEU’s preliminary ruling in Joined Cases C‑253/20 and C‑254/20.
Japan
FORTNITE owner defeated in FORTNIGHT invalidation action
Epic Games Inc, the developer of famous online game Fortnite, failed to invalidate the mark FORTNIGHT for various goods and services in Classes 9, 16, 28, 35, 41 and 43.
Wednesday, 12 June 2024
Belarus
Trademark use in public procurements: anti-monopoly authority finds no unfair competition
The anti-monopoly authority has considered a range of criteria based on competition law, which may be seen as a test to establish whether unfair competition has occurred.
Australia
7NOW dispute: Full Court considers use on website banner
The decision provides useful guidance on what trademark use can be established by use on a banner on a website with links to other pages.
Tuesday, 11 June 2024
European Union
Mac Wars: Supermac’s strikes back
The General Court has pared back on the goods and services allowed under the BIG MAC trademark registration in this long-running dispute between McDonald’s and Supermac’s.
International
UDRP complaint fails because(.com) there is no evidence of fame
There was no evidence that the complainant's BECAUSE trademark had amassed such fame as to displace the dictionary word usage of the term ‘because’ in the minds of the public.
Monday, 10 June 2024
European Union
NETFLIX v WEEDFLIX: Netflix fails to prove reputation of its marks in the EU
The evidence did not convincingly demonstrate the degree of recognition of the NETFLIX marks or that the marks were known by a significant part of the relevant public on the relevant date.
Japan
JPO finds no similarity between SOFTWEAR and SOFTWAIR
A key factor in the JPO Appeal Board’s decision was that SOFTWAIR has three possible pronunciations.
Friday, 07 June 2024
European Union
Louis Vuitton successfully invalidates figurative sign based on reputed LV mark
The EUIPO’s Cancellation Division found that the relevant consumers were likely to establish a mental ‘link’ between the contested sign and the French fashion house’s earlier LV mark.
Singapore
More descriptions accepted for addition into IPOS classification database for suggested goods and services
Brand owners are encouraged to consider specification items that may be of interest and make submissions to protect their rights.
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