Market Insight

New 18 JULY 2024

A deep dive into two Beijing High Court judgments indicates that a company’s use of its own mobile app constitutes trademark use and can therefore maintain registration in the face of cancellation or invalidation actions. Businesses should be aware of this when dealing with trademark challenges in China.

Authors:
Elian Xue

18 APRIL 2024

For rights holders following the CNIPA’s Guidelines on Trademark Assignment Procedures, there are some crucial factors that should be considered – especially regarding likelihood of confusion, trademark squatting and invalidation or cancellation challenges.

Authors:
Cynthia Wang

11 APRIL 2024

The published Guidelines on Trademark Assignment Procedures aim to help assignees follow the process of trademark registration. It is crucial for rights holders to understand these guidelines to facilitate smooth and cost-effective assignment.

Authors:
Cynthia Wang

04 JULY 2024

When it comes to provisional refusals of trademark registrations in the Western Balkans – whether they are based on absolute grounds or an opposition – it is crucial for rights holders to understand the legislative processes and timeframes during which to respond across the different jurisdictions to avoid delays. 

Authors:
Mila Mihailovic

28 MARCH 2024

When it comes to defending against trademark registrations that could threaten market exclusivity, oppositions are a viable option. There are various legislative processes that potential opponents should be aware of if they wish to commence proceedings in the Western Balkans.

Authors:
Mila Mihailovic

07 MARCH 2024

For rights holders that want to protect their trademarks in the Western Balkans, it is crucial to understand the laws that govern trademark filing and maintenance processes across the region.

Authors:
Mila Mihailovic

20 JUNE 2024

The Delhi High Court has shed light on the boundaries of comparative advertising in a trade dress dispute over NIVEA’s Crème face cream, highlighting the courts’ role in safeguarding consumer interests. Businesses and rights holders should be cautious to operate within these limitations when marketing their products. 

Authors:
Jessica Kaur Sahni

18 APRIL 2024

In a dispute between several tech companies, the Delhi High Court has intervened to restrain the defendant from reselling hard-drive disks. The decision highlights the interplay between proprietary rights and consumer interest, as well as the process of determining a product’s true origin.

Authors:
Aarti Aggarwal

11 APRIL 2024

In Sanofi v Zanofi, the Delhi High Court has ruled on the phonetic similarity of trademarks and trade names. In its assessment of the requirements involved in changing such names, the court clarified the interplay between the Trade Marks Act 1999 and Companies Act 2013 for the first time.

Authors:
V Mohini and Pragati Agrawal

06 JUNE 2024

A design and standard character mark infringement dispute has highlighted the validity of a declaration as evidence. While the defendant argued abuse of discretion by the PTAB, the Federal Circuit disagreed and supported a declaration from the director of the opposing company as sufficient for refusal to register. 

Authors:
Karen Gover

30 MAY 2024

In a long-running trademark spat between two children’s education charities, the Third Circuit has ruled that the district court erred in granting relief to the plaintiff. Its decision sheds light on the impact of a delay in bringing a suit as well as where the burden of proof lies.

Authors:
Sarah Bro

23 MAY 2024

In an infringement spat between the Fire Department of New York and a first responder, the Second Circuit overturned a district court decision to grant a preliminary injunction. The ruling highlights the importance of the differences between descriptiveness and secondary meaning under the Lanham Act. 

Authors:
Kathleen Lynch

09 MAY 2024

While revised guidelines from the Turkish Patent and Trademark Office aim to distinguish between types of consumers when it comes to buying goods and services, the metaverse raises questions about how to apply the guidance to classes of products and trademarks in the virtual space.

Authors:
Seral Cantürk

11 JANUARY 2024

Decisions from the Turkish Court of Appeal and the Turkish Patent and Trademark Office highlight practical differences between the two organisation’s processes. It is crucial for rights holders to understand these differences in order to best strengthen claims going forward.

Authors:
Merve Macit

31 AUGUST 2023

Companies and foreign rights holders must review their budgets and financial strategies to effectively accommodate changes to official fees and VAT rates. Adapting to these revised increases will help businesses to ensure compliance and avoid any potential penalties.

Authors:
Stock Intellectual Property Services AS

04 JANUARY 2024

Amendments to the Norwegian Trademark Act, which entered into force on 1 March 2023, have brought the country into line with current European legislation and directives. Exploring some of these changes reveals how they may impact registration decision making.

Authors:
Solvår Winnie Finnanger

15 JUNE 2023

A dispute involving the GI Scotch Whisky has led to a more harmonised approach between the DKPTO and EUIPO. It also highlights that consumer surveys are a powerful tool when evidence of public perception is required.

Authors:
Fabio Pezzolato

13 APRIL 2023

The publishing of the latest edition of the Nice Classification on 1 January 2023 provides clarity for applicants by highlighting disparities among the Scandinavian approaches to navigating trademark registration in digital marketplaces.

Authors:
Elizaveta Osipchuk

24 AUGUST 2023

A draft amendment to Taiwan’s Trademark Act is set to replace the post-registration opposition system with invalidation proceedings. It will introduce a trial and appeal board and will allow third parties to submit observations during the pre-registration examination process.

Authors:
Amanda Liu

13 JULY 2023

An amendment to Taiwan’s Trademark Law will muddy the scope of protection provided by good-faith prior use. This may make it more difficult for defendants to argue legitimate use of marks and for courts to assess infringement.

Authors:
Samuel Cheng

11 MAY 2023

The recently passed draft aims to modernise the Taiwanese trademark regime, shaking up pre-existing policies with regard to applications, reviews, oppositions, cancellations and Customs proceedings.

Authors:
Tony Chang

20 APRIL 2023

Amendments accepted in March officially codify a mix of new and previously existing practices of Polish IP courts into law, affecting rights holders at each stage of interim injunction proceedings.

Authors:
Klaudia Błach-Morysińska

23 FEBRUARY 2023

The EUIPO’s seismic cancellation – and eventual reinstatement upon appeal – of a McDonald’s registered mark highlights issues with Poland’s rules for proving genuine use.

Authors:
Klaudia Błach-Morysińska

02 FEBRUARY 2023

Three years since its debut, analysis of user rates clearly shows that the electronic services platform – a pivotal part of the office’s push for digitisation – continues to develop and help resolve users’ IP issues.

Authors:
Klaudia Błach-Morysińska and Paweł Poznański

16 FEBRUARY 2023

To ensure the viability of their brand’s evolving intellectual property, it is crucial that Swiss trademark owners understand and comply with proper use guidelines regulating any changes to existing marks.

Authors:
Isabelle Bruder

26 JANUARY 2023

Understanding Switzerland’s particular trademark use requirements is crucial for rights holders developing their protection and defence strategies and for applicants hoping to secure their marks.

Authors:
Nathalie Denel and William Fauchoux

21 OCTOBER 2021

With exceptions, it will no longer be a prerequisite to limit goods and services to their geographical origin for trademarks containing an indication of source. The Swiss Federal Institute of Intellectual Property appears to be becoming more flexible, aligning its approach with that of the European Union.

Authors:
Nathalie Denel

31 MARCH 2022

When a trademark achieves a reputation, owners can claim broader protection on goods and services not designated by their original registration. However, such brands also attract counterfeiters, which as the recent infringement of the PETUS mark shows, can damage reputation.

Authors:
François Willems

03 JUNE 2021

The first of a two-part article examining the Canadian Intellectual Property Office’s latest steps to address its ongoing backlog of applications examines recent practice notices aimed at increasing the speed and efficiency of domestic application examination.

Authors:
Jeffrey Vicq and Neil Melliship

19 NOVEMBER 2020

The Federal Court of Appeal has handed down its decision in Miller Thomson v Hilton Worldwide Holding LLP, which relates to a non-use cancellation proceeding against the WALDORF-ASTORIA mark. The decision helps clarify what it means to provide hotel and motel services in Canada.

Authors:
David Bowden

12 NOVEMBER 2020

A recent case demonstrates that public authorities can be held liable for trademark infringement, even where they have obtained protection for an official mark.

Authors:
Caroline Camp