Wednesday, 22 May 2024
European Union
Sta Grupa v EUIPO: a genuinely useful decision
The decision provides valuable guidance as to what constitutes evidence of genuine use in revocation actions before the EUIPO.
International
Not all domain name disputes are covered by the UDRP
The case serves as a reminder that the UDRP is not intended to resolve any and all disputes relating to domain names, such as the legality of disputed transfers.
Tuesday, 21 May 2024
Chile
MICHAEL JACKSON v MAIKEL PÉREZ JACKSON: important precedent issued
The Supreme Court's ruling in this case emphasises the importance of the principle of specialty and the high standard of evidence required to demonstrate bad faith.
India
Delhi High Court grants partial costs to Puma but no damages, as defendant is first-time knowing infringer
Although damages were not granted in this case, the grant of partial costs to the plaintiff should encourage similar actions.
Monday, 20 May 2024
European Union
DUTCH GENQUILA for wine held to evoke PGI ‘Tequila’
The relevant EU consumer is likely to establish a sufficiently clear and direct link between DUTCH GENQUILA, used for wine, and the spirit drink protected by the PGI ‘Tequila’.
Japan
IP High Court rejects registration of Audemars Piguet’s ‘Royal Oak’ watch design
The court confirmed that a device mark representing the Swiss luxury watchmaker’s iconic ‘Royal Oak’ watch lacked both inherent and acquired distinctiveness.
Friday, 17 May 2024
China
Lacoste v Cartelo: a landmark case clarifying the rules on confusion and co-existence
A change in marketing strategy may destroy the distinct market perceptions that previously enabled the marks’ co-existence, thus leading to a likelihood of confusion and association.
Uganda
Registrar considers resemblance in trade dress or get-up as ground for opposition
The registrar concluded that this was not a credible ground for opposition to the registration of a trademark in Uganda.
Thursday, 16 May 2024
European Union
VERLA v PHERLA: difference at the beginning offset by similar endings
The difference at the beginning of the marks was not sufficient to outweigh the visual similarity produced by the common group of letters ‘erla’ and would not preclude the relevant public from perceiving that common sequence.
United States of America
Timberland gets the boot: trade dress and its “formidable” burden of proof
The decision highlights that an applicant seeking federal registration for trade dress bears a “formidable” burden of proof to show secondary meaning and distinctiveness.
Wednesday, 15 May 2024
European Union
Likelihood of confusion between marks consisting of elderly men’s portraits: Board of Appeal decision highlights inadequacy of criteria used by EUIPO
The Board of Appeal confirmed that there was no likelihood of confusion between two marks consisting of the photographic portrait of an elderly man in traditional farming attire, both covering wine.
International
Don’t forget to renew your domain names
The case shows that the UDRP may be of no assistance to brand owners whose domain names are inadvertently allowed to lapse.
Tuesday, 14 May 2024
United States of America
TTAB denies Meta Platforms' motion to dismiss in dispute with MyMeta Software
The case highlights the importance of determining the rights upon which an opposition may be brought when filing for an extension of time to oppose.
China
CNIPA’s “Draft Measures for Calculating Illegal Revenue in Trademark Infringement Cases”: what you need to know
The draft measures provide brand owners with clarity on available remedies in trademark infringement cases.
Monday, 13 May 2024
European Union
EUIPO refuses to register Berlin transport company’s signature sound
The EUIPO notably found that the two-second sound mark was not capable of conveying any message that consumers would be able to remember.
Nigeria
Harnessing IP rights to drive innovation and sustainable development in Nigeria
A World IP Day Symposium organised by the Patents and Designs Registry highlighted the intersection of intellectual property and the Sustainable Development Goals adopted by the United Nations.
Friday, 10 May 2024
China
The notional acceptance of position marks in China: insights from the Dr Martens yellow stitching case
Brand owners must evidence how their position marks have acquired distinctiveness for the parts of the goods on which they are affixed.
European Union
COMPTON… straight outta where? Fashion styles and the importance of gangsta rap for hip hop culture
The decision gives guidance on how to form sub-categories that can invalidate the broader category of goods/services.
Thursday, 09 May 2024
European Union
General Court: JOYFUL BY NATURE would take unfair advantage of JOY's reputation
The fact that an opponent did not establish the market share held by the earlier mark does not necessarily mean that the reputation of that mark has not been demonstrated.
Japan
Can a letter of consent guarantee successful trademark registration in Japan?
The JPO has announced that, in addition to a consent letter, applicants must provide evidence that there is no likelihood of confusion between the earlier mark and the mark applied for - both at present and in the future.
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