Distinctiveness, Likelihood of confusion, National marks, Opposition, Similarity of marks, Switzerland, Trademark

(MLL Meyerlustenberger Lachenal Froriep AG)/ /Leave a comment

The prince and his prince house – where he lived happily ever after  The Swiss Federal Administrative Court, as the appeal authority in opposition proceedings, supported the decision of the FIIP and ruled that there was a likelihood of confusion between the younger trademark “Prinzenhaus” (engl. prince house) and the earlier trademark “Prinz” (engl. prince)…

Trademark

(Bereskin & Parr LLP)/ /Leave a comment

By Tamara Céline Winegust and Janice Bereskin. On June 17, 2022, it will be three years since the coming into force of major amendments to the Canadian Trademarks Act, and, importantly, three years since the Trademarks Office began registering trademarks without claims of use. In just under a month, those trademarks will start becoming vulnerable to…

Appeal, Brexit, CJEU, EUTM, General Court, Opposition, United Kingdom

, (Bugnion S.p.A)/ /Leave a comment

The UK finally said bye-bye to the EU, but for how long will UK-based rights still matter in deciding EUTM-related controversies? This is the subject of two recent decisions by the General Court, i.e.  the Basmati case, T‑342/20, decided on October 6, 2021, and the subsequent APE TEES case, T‑281/21, decided on March 16, 2022. In…

Case law, Coexistence, Denmark, Infringement

, (Gorrissen Federspiel)/ /Leave a comment

On 4 March 2021, the Danish Maritime and Commercial High Court (the Court) issued a decision between Mads Heindorf Jewellery (Mads Heindorf) and the company Heindorf Diamonds. The dispute regarded the jeweler Mads Heindorf’s trademark for the word “Heindorf”, which was asserted infringed by Heindorf Diamonds’ use of the name “Heindorf Diamonds” in relation to…

Acquired Distinctiveness, Israel, Trademark

, (S.Horowitz & Co.)/ /1 Comment

The Israeli Deputy Registrar, in a recent decision, overturned a rejection made by the examiner, and allowed the registration of a trademark for the Hebrew transliteration of “Chef Line” in classes 11 and 35 (Trademark Application No. 315406). In her decision, the Deputy Registrar accepted the arguments of the applicant, A.M. Chef Line Limited, which…

Case law, ESG, Registrability, Trademark, United States

(Verso Law Group LLP)/ /1 Comment

The Madrid Protocol makes it possible to extend protections from an international registration to the United States. A United States District Court has just cautioned practitioners that they must satisfy the intent to use requirements for all United States trademark applications before availing themselves of this tool. A recent contest between Oatly AB and D’s…

Case law, United States

(Wolters Kluwer Legal & Regulatory US)/ /Leave a comment

The jury instruction improperly stated that the plaintiff was required to show willfulness for an award of profits. Jury instructions given during a trial over whether a whale-watching company and its affiliates violated the Lanham Act by engaging in materially false or misleading advertising about their business failed to recite the correct legal standard, the…

Design Rights, European Union

(PhD Candidate, University College London)/ /Leave a comment

Background Craft and industrial products (CIPs) are a specific category of non-agricultural products originating in a certain geographic area and having a specific reputation for their qualities such as Brač stone or Murano glass. The Geneva Act of the Lisbon Agreement on Appellations of Origins and Geographical Indications (the Geneva Act) provides an international legal…

Case law, Confusion, United Kingdom

, (Stobbs IP)/ /Leave a comment

In January 2020, Volkswagen (VW, the Opponent) filed an opposition against this trade mark application, alleging a likelihood of confusion with its earlier 3D shape registrations . The Applicant’s mark covered camping vehicles and camping equipment and VW’s earlier marks cover broad vehicle and furniture terms.   The opposition was initially dismissed by the EUIPO…