Sector: Retail

In <i>Brill Outlet Eilat Ltd v Big Shopping Centres Limited Partnership</i> Justice Solberg of the Supreme Court affirmed interim relief granted by the district court to the owner of the mark BIG, used and registered for shopping malls, against the recently commenced use of the name Big Outlet for a large fashion outlet store.

20 June 2016

In <i>Re DLMW-BBQ LLC</i> the Trademark Trial and Appeal Board has held in a non-precedential decision that the mark BLACK BARK for restaurant services was entitled to registration and reversed the examining attorney’s refusal based on the prior registration of BLACK BARK BRISKET for “meat; prepared meat”.

17 June 2016

In an application to register Trademark 244245 in the name of Booking.com BV, the Israeli Patent and Trademark Office refused registration of the word mark BOOKING.COM, holding that the mark was generic and directly described the applicant’s services, and therefore could not acquire distinctiveness.

16 June 2016

After vanishing from shopping precincts in Australia and New Zealand earlier this month due to bankruptcy, consumer electronics retailer Dick Smith has been reborn as an online-only store thanks to the successful sale of its IP assets. The fall and rise of this household-name brand shows that the open market can present rich opportunities for both those looking to monetise trademark rights and those looking to acquire proven brands. However, there are also significant risks.

01 June 2016

In <i>Discount Drugstores Pty Ltd v Registrar of Trademarks</i> Discount Drugstores has succeeded in its appeal to the Federal Court of Australia concerning the registrability of the colours purple and orange in relation to pharmacy services. The case is unusual both in the way it was decided and the broad scope of protection afforded to the company.

31 May 2016

29 April 2016

In <i>Verkkokauppa.com v Veneilijänverkkokauppa.com</i> the Supreme Court has quashed two lower-court decisions, ruling in favour of the owner of Finnish trademark Verkkokauppa.com. The action was based on the 2004 registered word trademark covering "retail and e-commerce" in Class 35.

20 April 2016

The Indonesian Supreme Court hit the headlines back in February for upholding a decision to strip Swedish retailer Ikea of several trademarks after it fell foul of non-use rules. While the event will likely have exacerbated brand owners’ apprehensions about doing business in the country, the introduction of new regulations addressing the recording of licence agreements could boost their confidence in the trademark system

12 April 2016

The Office for Harmonisation in the Internal Market Opposition Division has upheld an opposition that there was a risk that The Body Shop International's use of the term SPA WISDOM would take unfair advantage of the distinctive character or repute of the Benelux trademark SPA. Its decision was confirmed by the Fourth Board of Appeal.

12 April 2016

A recent decision provides further support to the case law maintaining that a trademark can perform a distinctive function while also being perceived by consumers as a decorative element.

08 April 2016