Trademarks

Trial evidence supported the district court’s judgment, blocking registration of VAGISAN in the United States. The federal district court in Alexandria did not err in finding that a German company’s mark VAGISAN used on feminine care products was likely to cause confusion with Combe, Inc.’s VAGISIL brand used on identical ... Read More

This weekly Trademark Office data has been compiled from dynamic data published by the Trademark Office as updated till 18th August, 2021. These statistics are presented to you by the Trademark and Copyright team of BananaIP Counsels, India’s leading Intellectual Property Firm. Indian Trademark Statistics A decrease of 43 percent ... Read More

The district court’s attorney fee award was reasonable and did not violate First Amendment freedom of speech. In a trademark infringement case between two civic organizations that promote political candidates in Louisiana, the U.S. Court of Appeals for the Fifth Circuit affirmed a judgment by the district court awarding over ... Read More

This weekly Trademark Registry data has been compiled from dynamic data published by the Trademark Registry as updated till 11th August, 2021. These statistics are presented to you by the Trademark and Copyright team of BananaIP Counsels, India’s leading Intellectual Property Firm. Indian Trademark Statistics A decrease of 47.82 percent ... Read More

This weekly Trademark Registry data has been compiled from dynamic data published by the Trademark Registry as updated till 4th August, 2021. These statistics are presented to you by the Trademark and Copyright team of BananaIP Counsels, India’s leading Intellectual Property Firm. Indian Trademark Statistics An increase of 22 percent ... Read More

By Janice Bereskin and Jennie Yum It is a common occurrence in the lifetime of a brand for ownership to change. In some cases, multiple times as part of corporate restructuring or the sale of a brand. The cost and process for recordals can vary significantly in different countries. Generally, ... Read More

Indian Trademark Updates Samsung India Faces Temporary Injunction in Trademark Infringement Suit In a recent decision by the City Civil Court at Bengaluru, technology giant Samsung India, along with its service provider Story Experiences Pvt. Ltd., have been temporarily restrained from using the term “Concierge”.  The suit was instituted by ... Read More

According to the German Federal Supreme Court’s decision of 29 July 2021 (Case I ZR 139/20) the gold-colored foil of Lindt’s chocolate bunny is protected by a trademark acquired through use. The Court lifted the decision of the Higher District Court Munich which had rejected an infringement action against ... Read More

The summary judgment finding by the district court which rejected an air mattress company’s theory of initial-interest confusion and the accompanying jury instruction that a likelihood of confusion must exist at the time of purchase to support a trademark infringement claim was erroneous. In a suit by bedding manufacturer Select ... Read More

A decrease of 5 percent in the total number of applications examined by the Trademark Office this week. A total of 84 registrations granted. These statistics have been compiled from the official journal of the Trademark Office published weekly on Mondays.  Indian Trademark Statistics The Trademark Registry has displayed an ... Read More

The Brexit transition period has come and gone, and we are now almost 8 months into our post-EU life.  One thing we can all agree on is that the way we work and the processes we use have been hit fairly hard.  It will come as no surprise that the ... Read More

As you may recall, the CJEU in cases C-449/18P and C-474/18P of 17 September 2020, (see http://trademarkblog.kluweriplaw.com/2020/09/23/lionel-messi-scores-his-surname-trade-mark-the-cjeus-own-goal/) held that consumers recognized MESSI as the surname of the soccer player Lionel Messi, and considered this fact a matter of common knowledge because any reasonably observant and circumspect consumer was thought to ... Read More

In its TARGET VENTURES decision of 28 October 2020 (T-273/19), the General Court stated that there could be bad faith when there were objective indicia of a dishonest intention of the trademark owner, not necessarily linked to causing damage to a third party, when it seeks to obtain an abusive ... Read More

A decrease of 15 percent in total number of trademark applications examined by trademark office. A total of 4509 registrations granted. These statistics have been compiled from the official journal of the trademark office published weekly on Mondays.  Indian Trademark Statistics The Trademark Registry has had an overall decrease in ... Read More

In granting summary judgment, the district court incorrectly assumed that “actual use” of unregistered service mark requires actual sales and revenue generation. A federal district court applied an incorrect legal standard for “actual use” by plaintiff Erik M. Underwood of his unregistered service mark E.R.I.C.A., the Tenth Circuit U.S. Court ... Read More

In a recent case, the German Federal Patent Court had to deal with an interesting phenomenon among word marks called “disemvoweling”, a wordplay whereby the vowels of a word or text are removed (German Federal Patent Court,  Dec. of Feb. 1, 2021 – 26 W (pat) 576/18). In this context, ... Read More

FACTS OF THE CASE In this case, Cipla Limited, the Respondent/Plaintiff, filed a suit for permanent injunction before the Madras High Court. The suit was against Sun Pharmaceuticals Industries Limited, the Applicant/Defendant, as it infringed the Respondent/Plaintiff’s copyright and registered trademarks as follows: The Applicant/Defendant imitated and substantially reproduced ... Read More

Last year, the European Court of Justice (ECJ) took a decision clarifying the effects of the “Praktiker” decision on trademarks registered for “retail services” without further specifications in class 35 before the date of that judgement’s delivery in 2005. Regarding the background of the case, the German company Burlington Fashion ... Read More

Sun Pharmaceutical Industries Limited vs Cipla Limited In this case, the Respondent/Plaintiff filed a suit for a permanent injunction before the Madras High Court against the Applicant/Defendant for infringement of its copyright and trademark. The Court herein, granted an interim injunction in favour of the Respondent/Plaintiff. Henceforth, the Applicant/Defendant filed ... Read More

On 18 May 2021, the Polish Supreme Court issued a much awaited ruling to resolve doubts concerning the national limitation period of non-pecuniary claims in trademark matters. The resolution was adopted in the context of an infringement case of the frontline EU trade mark (EUTM) owned by Audi AG (see ... Read More

Miley Cyrus secures rights over her name, PepsiCo faces a trademark lawsuit over its new ‘Mountain Dew Rise’ beverage, and more brought to you by the Trademark Attorneys at BananaIP (BIP) Counsel INDIAN TRADEMARK UPDATES Delhi High Court Holds ‘Goodyear’ as Prima Facie Well-Known Mark The Delhi High Court, in ... Read More

The assessment of likelihood of confusion among descriptive marks often causes puzzling decisions, especially when the analysis focuses on whether consumers understand the descriptive character of certain terms,  and when different consequences are attached to whether or not such understanding (or lack thereof) matters at all.   The General Court ... Read More

Summary Tefal applied to register “a plain red dot affixed centrally to the bottom of a cooking receptacle (such as a pan, saucepan)” (below). The goods covered were “frying pans, saucepans, casseroles, stew-pans, cooking pots, crepe pans, grills, woks” in Class 21.   The UK IPO refused the application ... Read More

March 8 was, according to questionable sources, National Retro Video Game Day in the US.  As one of Foley Hoag’s several resident video game nerds, this reminded me of one of my favorite video-game-related IP disputes. In the 1970s, a nearly century-old Japanese playing card company called Nintendo started ... Read More

While Shakespeare may have wondered “what is in a name?”, the executives at Peloton believe that the trademark SPIN is of great importance. Last month (February, 2021), Peloton filed petitions to cancel the trademarks SPIN and SPINNING for physical fitness instruction and for stationary exercise bicycles on the grounds that ... Read More

By Bennett Liebman Actors' Equity Slams New York City's "Open Culture" Outdoor Performance Plan, https://deadline.com/2021/03/actors-equity-association-open-culture-plan-new-york-city-wage-safety-issues-1234706412/ Offstage Tempest at American Shakespeare Center, https://www.americantheatre.org/2021/03/04/an-offstage-tempest-at-american-shakespeare-center/ COVID and theater: Daniel Fish, Culture Clash reflect on shutdown, https://www.latimes.com/entertainment-arts/story/2021-03-02/covid-theater-shutdown-anniversary-daniel-fish-culture-clash With Broadway still dark due to Covid, actors find work 10,000 miles away in Australia, https://www.cnn.com/style/article/broadway-covid-sydney-australia-intl-hnk/index.html Democracy ... Read More

By Bennett Liebman LSU football: Les Miles was banned from being with co-eds, https://www.usatoday.com/story/news/investigations/2021/03/04/es-miles-banned-contacting-co-eds-after-probe/6918204002/ Supreme Court Brief In Alston Case Should Make The NCAA Very Concerned, https://abovethelaw.com/2021/03/supreme-court-brief-in-alston-case-should-make-the-ncaa-very-concerned/ Overtime Is Going To Start Paying Top HS Basketball Talent, https://www.outkick.com/overtime-is-going-to-start-paying-top-hs-basketball-talent-6-figure-salaries/ Former NFL Player Kellen Winslow II Sentenced To 14 Years, https://www.npr.org/2021/03/04/973541706/former-nfl-pro-bowler-kellen-winslow-ii-sentenced-to-14-years-for-sex-crimes Tokyo ... Read More

Image from here The issue of IP protection of jewellery has hardly been discussed or adjudicated upon in India. Generally, it is understood that the sketch of the jewellery design can be protected as artistic work under copyright law, while the actual appearance of the ... Read More

Background On 1st March 2021, an updated version of the EUIPO Guidelines for examination of EU Trade Marks entered into force. Changes can be seen in the ‘track changes’ version. This reveals extensive revision throughout. As these changes are, inter alia, intended to align the Office’s procedures with recent decisions ... Read More