Work Area: Trademark law

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USPTO proposes new filing rules for 2025

The USPTO has requested written opinion from the public in response to its proposed changes to trademark filing procedures and fees. The new rules aim to support the office’s strategic objectives and improve prosecution.

18 April 2024

Delhi High Court restricts tech company from selling refurbished hard-drive disks in reverse passing off case

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.

18 April 2024

Navigating China’s social media landscape: issues and best practices for brand protection 

Featured in WTR Special Report Q1 2024: The future of brand protection on social media

18 April 2024

Application of China examination guide puts brand owners with historically “tainted” marks in a vulnerable position

In this week’s opinion column, Simmons & Simmons’ Anna Li and George Chan warn that acquired third-party marks may be permanently “tainted” by the original owner’s bad faith and at risk of invalidation.

13 April 2024

Greek KALAMATA olive decision sets precedent for future EU GI disputes

In a decision of EU-wide significance, the Supreme Administrative Court of Greece has found that a PDO for KALAMATA olives could coexist with a plant variety right of the same name.

12 April 2024

Breitling prevails with good-faith defence in Second Circuit infringement dispute ruling

An infringement suit brought against luxury watch retailer Breitling has shed light on the implications of using trademarks as descriptive terms. The court’s decision to grant summary judgment highlights how the good-faith prong in the fair-use defence can help when it comes to likelihood of confusion.

11 April 2024

Delhi High Court addresses implications of legislation governing trade name changes following a finding of infringement

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.

11 April 2024

CNIPA highlights critical aspects of trademark assignment in published guidelines

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.

11 April 2024

Court of Appeal grudgingly upholds trial decision in Lidl v Tesco

In this long-running dispute between supermarket competitors, the Court of Appeal upheld the trial judge on almost all points, but expressed significant disquiet about the overall outcome.

05 April 2024

Fourth Circuit clarifies district court’s power to subpoena in USPTO proceedings

Upholding a district court decision in a software dispute, the Fourth Circuit has shed light on the rules that govern the power to subpoena evidence for use. The judgment underscores the differences between the TTAB and the courts, and the strategic implications of such a distinction.

04 April 2024

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