In its TARGET VENTURES decision of 28 October 2020 (T-273/19), the General Court stated that there could be bad faith when there were objective indicia of a dishonest intention of the trademark owner, not necessarily linked to causing damage to a third party, when it seeks to obtain an abusive exclusive right. The case is…
In granting summary judgment, the district court incorrectly assumed that “actual use” of unregistered service mark requires actual sales and revenue generation. A federal district court applied an incorrect legal standard for “actual use” by plaintiff Erik M. Underwood of his unregistered service mark E.R.I.C.A., the Tenth Circuit U.S. Court of Appeals in Denver has…
In a recent case, the German Federal Patent Court had to deal with an interesting phenomenon among word marks called “disemvoweling”, a wordplay whereby the vowels of a word or text are removed (German Federal Patent Court, Dec. of Feb. 1, 2021 – 26 W (pat) 576/18). In this context, the word mark “Cndy Brz”…
On 18 May 2021, the Polish Supreme Court issued a much awaited ruling to resolve doubts concerning the national limitation period of non-pecuniary claims in trademark matters. The resolution was adopted in the context of an infringement case of the frontline EU trade mark (EUTM) owned by Audi AG (see below). The Supreme Court’s resolution…
The German Federal Court of Justice (“BGH”) held in its decision “Papierspender” (“Paper Dispenser”) that a Community design was not automatically caught by the functionality provision of the Community Design Regulation because it had appeared in a patent application. The decision highlights the importance for product developers to keep detailed records, already during product development,…
Any entity operating a fantasy sports platform would wish to display names of players and teams, for ease of identification and to make the platform as realistic as possible. Player or team names, however, where they act as source identifiers, would fall within the definition of a trademark, and their proprietors could enforce their rights…
A party that appeals a Trademark Trial and Appeal Board (TTAB) decision to the Federal Circuit does not waive the right to challenge a subsequent TTAB decision in district court. A North Carolina district court erred in finding that it lacked jurisdiction to hear an appeal of a TTAB decision issued after remand from the…
Widow of longtime MAD artist Don Martin can go forward with mark infringement, publicity rights claims over publications that occurred within Florida’s four-year catch-all statute of limitations. The widow of MAD Magazine cartoonist Don Martin is not time-barred from pursuing trademark infringement and publicity rights claims against the publisher of MAD and DC Comics, to…
Tire maker entitled to recover on injunction bond for wrongful prohibition on sale of certain brand tires. The federal district court in Yakima, Washington, correctly ruled—on remand and in accordance with a prior instruction—that leaving a preliminary injunction in effect after trial was wrongful, the U.S. Court of Appeals in San Francisco has held. However,…
The Canadian Intellectual Property Office (“CIPO”) published two new practice notices on Monday, May 3rd, 2021, dealing with expedited examination and improving timeliness in examination. The prospect of expedited and more timely examination will be welcomed by trademark owners, frustrated with extended delays in examination. Expedited Examination Beyond very limited opportunities for marks covering goods…
