More than four years since major amendments to the Canadian Trademarks Act were passed, the government has signaled that implementation is finally expected in the spring of 2019. These changes are the most significant changes since the 1950’s. The following changes are of primary interest: Elimination of use as a requirement for registration. Registration will…
As reported earlier this year, in a ruling dated February 12, 2018 by the Commercial Court of Kyiv in the case no. 910/14972/17, the judge effectively applied a five-year non-use grace period, as provided for under the Association Agreement with the EU (Art. 198), and rejected the non-use cancellation action, which was based on the…
The U.S. Court of Appeals affirmed a Seattle district court’s dismissal of trademark infringement and false advertising claims filed against Amazon.com, Inc. by a seller on Amazon. The district court concluded that Amazon was not liable for promotional advertising emails that used the seller’s trademark because it did not imply a false association between Amazon…
In a trademark dispute over use of the brand name ROGUE for clothing, the federal district court in New York City erred by ruling on summary judgment that an apparel manufacturer was the rightful owner of the mark for clothing, and that an Oregon brewery was only entitled to sell clothing under the ROGUE Mark…
After many months of uncertainty, we have now received a degree of assurance as to the manner in which EUTM and RCD rights will persist in the UK following Brexit. This assurance has come from Robin Walker, the Under-Secretary of State for Exiting the European Union, in a recent Parliamentary debate: UK-owned trademarks and…
On 25 July 2018, the CJEU handed down its ruling in the latest edition of the battle between Nestlé and Mondelez over the KIT KAT shape (C-84, 85, 95/17 P). This time, the discussion focused on whether a non-traditional EU trade mark that is not inherently distinctive must be shown to have acquired distinctiveness in the…
Despite recent U.S. Supreme Court cases holding that laches does not apply within the limitations periods for patent and copyright claims, laches is available as a defense to a cancellation claim during the five years following registration of a mark, while the mark is still “contestable,” a panel of the U.S. Court of Appeals for…
In Germany, the Higher Regional Court Düsseldorf decided that trademark rights were not exhausted in a case where luxury cosmetic products were offered at a German discounter. The Court held that the offer of the luxury cosmetic products at the discounter stores as well as at the discounter’s online-shop would be detrimental for the image…
We recently reported on the introduction in Greece of mandatory mediation in trademark infringement disputes in this blog here. The respective legal provisions of law 4512/2018 shall start to apply as of 17 October 2018. On 28.6.2018, the Greek Supreme Court’s administrative plenary panel issued an opinion holding that the mandatory mediation introduced by this…
Spain is obtaining the questionable reputation for protecting terms that are completely descriptive in other major languages as trademarks. MATRATZEN is one (in)famous example, DONUT is another. However, the term AFTERSUN, commonly applied to skin care to be used after sun bathing, has now been rescued from the trademark monopoly. Laboratorios Genesse (now: AC Marca…
