Sector: Retail

The Ninth Circuit Court of Appeals has held in <i>Trader Joe’s Company v Hallatt</i> that the extraterritorial reach of the Lanham Act is a question of the claim’s merits rather than a question of the court’s subject-matter jurisdiction.

05 October 2016

This week the ‘.shop’ gTLD hit general availability, with the registry behind the string revealing that it registered almost 40,000 domains in the first 30 minutes of sales. Watchers of the expanded online space – particularly trademark owners seeking to gauge the need for defensive registrations – have been awaiting the launch of strings that go truly mainstream. So is the early performance of ‘.shop’ a sign that the blockbusters are now arriving?

28 September 2016

In <i>Future Enterprises Pte Ltd v EU Intellectual Property Office</i>, the EU General Court held that McDonald’s reputation makes it possible to have exclusive rights to the use and registration of trademarks that contain the prefix ‘Mac’ or ‘Mc’ for food and beverages.

13 September 2016

A coalition of international brand and trade groups has sent a letter to senior figures at Alibaba Group highlighting continued concerns around the implementation of effective anti-counterfeiting measures on its platforms. While the letter includes scathing criticisms of some of the currently available tools – decrying the processing of non-good faith notices as “woeful” – it offers a number of practical recommendations on how the online giant could improve.

08 September 2016

German footwear maker Birkenstock has decided to quit the Amazon marketplace in protest at what it perceives to be a lax approach to counterfeiting on the part of the online retailer.

21 July 2016

Last week, the European Court of Justice confirmed that operators of physical marketplaces could be held liable for the sale of counterfeit and other illicit goods by market traders. While deemed a significant win for IP owners, the decision also demonstrates the effectiveness of joint-party legal actions – with experts telling <i>World Trademark Review</i> that they strongly encourage more precedent-setting collaborations.

13 July 2016

US sports shoes maker New Balance has expressed disappointment with a Chinese court’s decision over ownership of the BAI LUN and XIN BAI LUN (新百伦) marks, with New Balance ordered to pay Rmb5 million in damages. While a blow, the company has told <i>World Trademark Review</i> that it will invite consumers to help it create a new Chinese trademark as part of its branding strategy.

06 July 2016

In <i>El Cortes Ingles v European Union Intellectual Property Office</i> the EU General Court upheld the decision by the Board of Appeal to reject El Cortes Ingles’ opposition to the mark SUPECO. The issue considered in the decision was new as the opposition was made against only some of the products and services.

04 July 2016

01 July 2016

In an April 14 2016 decision a French court of first instance held that Auchan’s Community Trademarks SIMPLY and SIMPLY MARKET were descriptive terms and therefore invalid and rejected Auchan’s unfair competition claim against Marks & Spencer. It also clarified the scope of counterclaims for invalidity.

30 June 2016