If You Want It, You Should Have Done a Search On It: Why Trademark Searches are Essential Before Settling Down With a New Brand
K&L Gates | IP Law Watch
by Liz Bodey
2w ago
Have you chosen a brand only to learn months later that the U.S. Patent and Trademark Office is refusing to register it due to someone else’s prior trademark registration or pending application? The USPTO’s most recent Q4 2022 data indicates that it takes 8 months or more for a trademark application to be reviewed—and ideally approved—by an examiner. Given that prolonged timeline, any issues with the application, such as a similar third-party mark that could prevent your own registration, may not surface until you or your company has already invested heavily in the mark. This raises the questi ..read more
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The Battle of the Supermarkets Vol. 2 – GINgle Bells, GINgle Bells, GIN All the Way
K&L Gates | IP Law Watch
by Liz Bodey
1M ago
It is beGINning to look a lot like a legal disputes saga between supermarkets in the UK. We have recently covered an ongoing dispute between Lidl and Tesco (see here), which relates to an alleged trade mark infringement. This time, Marks & Spencer (M&S) are suing the largest Europe’s discount grocery chain Aldi for copying their registered designs of the light-up Christmas gin bottles. This is the second legal case in recent times brought by M&S against Aldi, with the first one involving the famous Colin the Caterpillar cake, which has since been settled. Notably, the case at hand ..read more
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Trademark Applications and Infringements in Germany: The Importance of Potential Revocation and Non-Use
K&L Gates | IP Law Watch
by Liz Bodey
1M ago
Hamburg, Germany – Not only known for its famous seafood and the third largest European seaport for goods and cargo handling1, but also a considerable and noteworthy jurisdiction when it comes to the protection and enforcement of trade mark rights in preliminary proceedings. The Higher Regional Court of Hamburg found in a recent trade mark dispute in preliminary injunction proceedings (Decision of 29 September 2022 – 5 U 91/21) between the “Deutsche Telekom” (“Claimant”) and the Spanish telecommunication company “Telefónica” and its German subsidiary (together “Defendants”), that the applicati ..read more
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New Guidance for Digital Content Creators’ Metadata from the U.S. Court of Appeals
K&L Gates | IP Law Watch
by Liz Bodey
1M ago
The Court of Appeals for the Eleventh Circuit recently held that merely removing copyright management information (CMI), without showing that that defendant knew or would have reason to know that its actions would induce, enable, facilitate, or conceal a copyright infringement is insufficient to meet the Digital Millennium Copyright Act’s (DMCA) requirements for liability for wrongful removal of CMI.1 CMI typically consists of items such as title and authorship. In the digital world, CMI frequently is provided in metadata, essentially background technical data about a digital work. Metadata is ..read more
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The ‘Standard’ of Use Evidence in the EU – Advertising and Promotion Can be Enough to Show Genuine Use of a Service Without That Service Actually Crossing the Pond
K&L Gates | IP Law Watch
by Liz Bodey
1M ago
Does evidence showing booking, advertising and selling services in the EU constitute genuine use if the service actually registered takes place abroad? This was the question contemplated by a recent decision of the General Court. The case T-768/20 (Standard International Management LLC v EUIPO) addresses the use of trade marks in the EU where the relevant brand operates hotel and leisure facilities outside the jurisdiction. The Case Standard International Management LLC (“SIM’) is a hotel operator and the owner of an EU logo mark ‘The Standard’ which was registered in 2011 (the “Mark”). Asia S ..read more
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The battle of the Supermarkets – Evergreening of Trade Marks and Potential Bad Faith
K&L Gates | IP Law Watch
by Liz Bodey
1M ago
Two well-known grocery stores, Tesco and Lidl, are involved in an ongoing trade mark dispute (Lidl Great Britain Limited v Tesco Stores Limited [2022] EWHC 1434 (Ch)). While the trial is set to take place in 2023, the recent developments in relation to arguments of bad faith are noteworthy, especially for brands engaged in trade mark refiling, or ‘evergreening’. The Dispute Lidl is a budget supermarket that owns a number of trade mark registrations for its logo, including a figurative mark bearing ‘LIDL’ in the middle, and a plain logo mark with no text (see below). The biggest grocery st ..read more
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Old Lady Shows Her Youth With Win in Significant Trade Mark Ruling Concerning NFTs
K&L Gates | IP Law Watch
by Liz Bodey
1M ago
Juventus FC (affectionately nicknamed the “Old Lady”) has won a noteworthy ruling in its case of trade mark infringement brought against the non-fungible token (“NFT“) producer Blockeras s.r.l (“Blockeras”). The Rome Court of First Instance, on 20 July 2022, ruled that the unauthorised minting, advertising and sale of NFTs1 can infringe the trade mark rights of the relevant owner. Juventus FC sought a preliminary injunction from the court to prevent Blockeras from selling NFTs that made use of Juventus’ trade marks. The marks included the “Juventus” and “Juve” word marks as well as the design ..read more
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Mind the Gap: Patagonia Sues Gap For Copying Fleece Design
K&L Gates | IP Law Watch
by Liz Bodey
2M ago
High-end outdoor clothing brand Patagonia Inc is taking on fast fashion retailer Gap for copying its “iconic” fleece jacket design. Patagonia Inc has filed court proceedings in the Federal Court. In a complaint filed on 22 November 2022, Patagonia alleges that Gap willfully and deliberately copied the fleece design through the creation and sale of its “Mockneck Pullover” jackets, mimicking the flap pocket and rectangular logo of Patagonia’s classic “Snap-T” fleece jackets (shown below). Patagonia “Snap-T” Pullover Fleece Gap Product Images taken from Patagonia website at URL: www.patagonia.c ..read more
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Singapore Maintains Hard-Line Take on Goodwill in Million-Dollar Wonton Noodle Feud
K&L Gates | IP Law Watch
by Liz Bodey
2M ago
In Singapore, popular eatery “ENG’S Wonton Noodles” is known for its springy noodles, luscious wonton dumplings and fiery chilli sauce. Its popularity attracted more than S$1.6 million in revenue one year, but a fallout between the founder’s children and their business partners led to multiple disputes, including a dispute over trade mark rights to the “ENG’S” name in Pauline New Ping Ping v Eng’s Char Siew Wantan Mee Pte. Ltd. [2022] SGIPOS 10. Ng Ba Eng (Eng) inherited the wonton noodle business from his father around 1962 and operated it with his son, Desmond Ng (Desmond) using the signboar ..read more
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Dior Did Not SADDLE on Distinctive Character of Its Iconic Bag
K&L Gates | IP Law Watch
by Liz Bodey
2M ago
Another unfavourable decision on non-traditional trade marks has landed, now in relation to Dior’s iconic Saddle bag. The EUIPO’s Second Board of Appeal decided that Dior’s Saddle bag is not distinctive with respect to handbags. The decision is seen as surprising yet not unpredictable, given the recent history of unsuccessful trade mark applications for 3D signs (for example, see our previous article on the Moon Boot case here). The Dior Saddle bag first appeared in the Spring 2000 ready-to-wear collection. The bag immediately became much-wanted piece worn by many celebrities. After many years ..read more
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