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…
In mid-November, the Russian Intellectual Property Court published a noteworthy decision shedding light on an ambiguous pre-trial procedure in IP disputes. The procedure (effective since 1 June 2016) has raised numerous concerns over its adverse effect on IP enforcement. On November 18, 2016, the Russian IP Court reviewed the dispute between Daimler AG and TMR…
In a recent decision of the General Court of the European Union (General Court), the Italian fashion house Gucci (Guccio Gucci SpA) once again drew the shorter straw against permanent rival Guess (Guess? IP Holder LP). This judgment forms the most recent in a string of cases fought between the two companies throughout Europe,…
A recent case before the European Court of Justice has dealt with the interesting question of how Article 7(1)(e)(ii) of Regulation No 40/94 (now replaced by Regulation 207/2009), which provides that signs which consist exclusively of the shape of goods necessary to obtain a technical result shall not be registered, should be assessed. Thereby, German…
In a decision dated 21 September, 2016 the Danish Maritime and Commercial High Court decided that use of the name ‘Graceland Randers’ is an infringement of the reputed trademark ‘Graceland’ owned by GL SPE LLC, the official owner of the Elvis Presley trademarks. Graceland Randers Graceland Memphis http://memphismansion.dk/museum/) https://dk.pinterest.com/ The company owned by Henrik…
The Czech Supreme Court has recently confirmed that it is an act of unfair competition to file a take-down notice to a social media network claiming intellectual property infringement while omitting further relevant information. The court ordered the defendant to make a submission to the social media network withdrawing the take-down notice and to pay…
On 18 October 2016, His Honour Judge Hacon (‘Hacon’) handed down his decision in AMS Neve Limited v Heritage Audio S.L. [2016] EWHC 2563 (IPEC). This concerned an application, under the Civil Procedure Rules Part 11, by the Spanish defendant ‘Heritage’ for a declaration that the English Courts do not have jurisdiction to try the…
The Trademark Trial and Appeal Board properly affirmed a trademark examining attorney’s refusal to register two proposed marks consisting of prominent wording—”SHIMMERING BALLERINAS & DANCERS CHARACTER COLLECTION” and “SHIMMERING RAINFOREST CHARACTER COLLECTION,” respectively—adjacent to three columns of hundreds of terms that appeared to be story titles or character names, the U.S. Court of Appeals for…
A recent Supreme Court judgement in the Dalí case shows clear respect for trademarks but raises some questions regarding image. A great many brands have used in their advertising campaigns the images of people who, despite no longer being alive, continue to have considerable selling power. There are even marketing studies which show that advertising…
