Trademarks – Page 23 – IP Law Watch

Fashion Designer Tory Burch Awarded US$41 million in U.S. Trade Mark Case

Jul 27 2015

In November 2013, fashion designer Tory Burch sued Youngran Kim, and three companies controlled by Kim, for counterfeiting and trade mark infringement relating to the sale of jewellery. The jewellery featured a registered logo trade mark design owned by Tory Burch. While this was not the basis of Tory Burch’s legal claim, it is worth noting that, as well as featuring Tory Burch’s logo device, the defendants’ jewellery also closely resembled jewellery designs that had been released by Tory Burch, as seen below.

Parody Marks, Reputation and ‘Misleading and Deceptive Conduct’ in Australia

Jul 21 2015

In May 2013, Catchoftheday.com.au Pty Ltd applied to register the following marks:

BP 2 BP1

Target Australia Pty Ltd (Target), a well known Australian retailer, opposed registration of the marks. It argued that under section 42(b) of the Trade Marks Act 1995 (Cth), use of the Trade Marks would be contrary to law.

New OHIM Registry Practice for Community Trade Marks

Jun 26 2015

Nice Class Headings

If your international brand portfolio includes Community trade marks (CTMs) which were filed prior to 22 June 2012, you should be carefully reviewing your portfolio in light of changes expected to come into force under the draft Community Trade Mark Regulation (Regulation), a revised draft of which was released last week.

International brand owners will be familiar with the classification system under the Nice Agreement concerning the International Classification of Goods and Services. The system consists of 34 classes of goods and 11 classes of services, explanatory notes and an alphabetical list of goods and services. The class headings provide a general indication of the fields to which the goods and services in each class belong.

European Union Trade Mark Law Reform – Revised Drafts Released

Jun 12 2015

On 8 June 2015, the Council of the European Union published the final texts of its proposal to amend the Community Trade Mark Regulation (Regulation) and Trade Mark Directive (Directive).

The revised drafts reflect the key issues which have been the subject of significant debate in the last year, including:

harmonisation of trade mark law and practice between EU member states
measures to protect brand owners’ rights with respect to counterfeit goods in transit
cooperation between Office for Harmonization in the Internal Market (OHIM) and national trade mark offices
governance and finances of OHIM.

The Protection of ‘Weak’ Trademarks Having Acquired Secondary Meaning

Apr 21 2015

On February 2, 2015, (judgment no. 1861) the Italian Supreme Court ruled on a case involving two Italian companies active in the sector of furniture: Natuzzi S.p.A., owner of the Italian and European trademark ‘Divani & Divani’ (Trademark 1), and Divini & Divani S.r.l. (Divini & Divani), which started to use the trademark ‘Divini & Divani’ (Trademark 2).

Natuzzi claimed that the use of Trademark 2 was illegitimate, constituted an act of unfair competition as well as trademark infringement claiming the use generated confusion amongst customers. In particular, Natuzzi stated that, even if Trademark 1 was composed by two common words (literally in English ‘Sofas & Sofas’), it acquired specific distinctiveness. Consequently, Natuzzi sought to prevent Divini & Divani from using Trademark 2 as a company name and a trademark for its products. Divini & Divani counterclaimed that Natuzzi’s requests were groundless because there could not be any confusion between the trademarks and, in any case, Trademark 1 was weak and consequently, not worthy of protection.

The Chinese Translation of a Registered Word Trademark can be Used as a New Figurative Trademark in Italy

Apr 17 2015

On January 9, 2015, a decision of the Italian Patent and Trademark Office (Ufficio Italiano Brevetti e Marchi, hereafter ‘UIBM’) rejected an opposition made by Jaguar Land Rover Limited (Land Rover), in order to prevent the registration, in Italy, by China Depend Limited (China Depend) of a figurative trademark. The trademark was formed by two Chinese ideograms corresponding to the sign used in China by Land Rover to identify its activity, which once translated means ‘land’ and ‘tiger’, but allegedly commonly translated into ‘Land Rover’ ( Ideogram Trademark).

Land Rover, owner of the two Italian word trademarks ‘Land Rover’ and ‘Range Rover’ (Land Rover Trademarks), filed an opposition pursuant to Article 12, paragraph 1, letter d) of the Italian Intellectual Property Code setting forth the likelihood of confusion between similar trademarks. In particular, the provision provides that signs cannot be registered as trademarks if, at the date of the registration filing, they are similar or identical to other trademarks previously registered by third parties in the same country or are enjoying protection in the same country.

Roger Maier and Assos of Switzerland SA v ASOS plc and ASOS.com Limited

Apr 02 2015

In a long-anticipated decision, the Court of Appeal of England and Wales (Court of Appeal) on Wednesday held, by 2-1 majority, that use of the ASOS brand by the popular online clothing retailer was defensible under the ‘own name’ defence in Community trade mark law.

The decision, which reversed the findings of the judge at first instance, will be appealed to the Supreme Court (the highest court in England and Wales) by the Claimants, who own the successful ASSOS cycling clothing business and are the proprietors of a Community trade mark for the ASSOS word mark, which has been registered since 2005.

An Ounce of Prevention: Act Now with “.sucks” Registration Opening

Mar 30 2015

As many brand owners may know, the Internet Corporation for Assigned Names and Numbers (“ICANN”) recently approved the .sucks gTLD. The Sunrise period for trademark owners to register .sucks domain names containing their trademarks begins on March 30, 2015; the general availability period begins on June 1, 2015. We recommend that brand owners consider registering their main brand or trademark as a .sucks domain to block third parties from doing the same.

To read the full alert, click here.

United States Supreme Court Holds That Trademark Trial and Appeal Board Determination of Likelihood of Confusion May Bind Subsequent Court Infringement Case

Mar 26 2015

On March 24, 2015, in a case covered here in a previous posting (On Tap at the U.S. Supreme Court: An Important Trademark Case, September 3, 2014), the United States Supreme Court (Supreme Court) held that a determination of likelihood of confusion by the Trademark Trial and Appeal Board (TTAB), in an administrative tribunal which determines registerability, may preclude further litigation of the issue in a subsequent infringement case. In B&B Hardware, Inc. v. Hargis Industries, Inc., the Supreme Court reversed a decision by the Eighth Circuit Court of Appeals, which had determined that a TTAB finding would not bind an infringement court because, among other reasons, the factors considered by the TTAB were not identical to those considered by the trial court. The Supreme Court, though, by a 7-2 vote, held that when the ordinary elements of issue preclusion are met and where the issues in the two cases are identical, the ruling by the agency tribunal controls. The Supreme Court also found that even though the specific factors considered in a likelihood of confusion analysis may vary somewhat, they are not ‘fundamentally different’ and that the ‘likelihood of confusion’ standard is the same for registration and infringement purposes.

Decade Old Official Fees set to Change for Trade Marks and Designs in Hong Kong

Mar 20 2015

On 18 March 2015, the Hong Kong Intellectual Property Department (IPD) informed E-filers that, subject to the completion of legislative procedures, certain official fees for trade marks and designs will be revised from 30 March 2015. Official renewal fees for trade marks and designs will be slashed. The official filing fees for trade mark applications and searches will be hiked, to help the IPD recover its running costs. Read More

Category:Trademarks