The body of law drawn from the precedents set by earlier decisions.
The federal district court in San Diego did not err in ruling on summary judgment that Seal Shield LLC failed to establish that its predecessor had used the mark LIFE PROOF in commerce in connection with electronic device covers before Otter Products’ subsidiary TreeFrog Developments applied to register LIFEPROOF, the U.S. Court of Appeals in…
We all know that acquiescence is an absolute defense against infringement which occurs when a proprietor of an earlier mark has acquiesced, for a period of five successive years, to the use of a later registered trademark while being aware of such use. However, neither EU nor Italian (or, to our knowledge, any other national) trademark…
Nvidia Corp v Hardware Labs (GTX) [2016] EWHC 3135 Ch For manufactures of steam engines in the late 19th century, tactics of systematically threatening to sue your competitors’ customers for infringement of intellectual property rights were fair game. Nowadays, businesses in the UK have to contend with the laws on unjustified threats which prohibit such…
Following a request for cancellation, the Federal Patent Court decided to cancel a shape mark for sweets arguing that it exclusively consisted of a shape necessary to obtain a technical result (Decision of the Federal Patent Court of 27 December 2016 on Case 25 W (pat) 59/14). The cancellation request was directed against the German…
The UK Court of Appeal’s (Criminal Division) (CoA) judgment in R v C & Ors [2016] EWCA Crim 1617 provides a positive result for brand owners tackling the thorny issue of grey goods. Here, the CoA held that selling grey goods can constitute a criminal offence under s.92 of the Trade Marks Act 1994 (TMA)….
And the winner is… the Oscar. It is hard not to connect the word ‘Oscar’ to the statuette awarded every year in Los Angeles for the best movies, directors, actors and producers. At the same time, when used in different sectors, the term ‘Oscar’ should now be considered as generic. This is – at least…
A recent judgment by the Beijing IP Court has thwarted Apple’s attempts to obtain trademark protection for the standby screen of the iWatch! Apple may appeal this judgment. On 13 November 2014 Apple had applied to file the sign depicted in Figure 1 as a trademark in China in classes 9, 10, 14, and 38….
In a recent decision, the Federal Administrative Court reminded everybody that under Article 5(2)(a) Madrid Protocol, any refusal of protection of an international mark may only be based on the reasons that have been notified to International Bureau (WIPO) within the one year period from the date on which the notification of the extension has…
An injunction preventing China-based Sun Earth Solar Power Co. and its U.S. affiliate NBSolar, Inc. (collectively, “SESP”) from using the trademark “Sun-Earth,” while permitting SESP to state within the United States the fact of their affiliation with the Sun-Earth name and mark that they used outside of the United States, and to allow SESP to…
The UK High Court (‘HC’) decision in Victoria Plum Ltd v Victorian Plumbing Ltd & Ors [2016] EWHC 2911 concerns the use of AdWords by co-existing competitors bidding on each others’ names. Of particular interest are the issues raised by the parties’ co-existence and involves an unsuccessful defence of “honest concurrent use” (a defence not provided…
