District court improperly dismissed Bacardi’s challenge to the PTO decision for lack of subject matter jurisdiction. Finding no provision in the Lanham Act that expressly precludes judicial review of a trademark registration renewal decision by the USPTO Director, the United States Court of Appeals for the Fourth Circuit in Richmond, Virginia has reversed a district ..read more

Already in 2019, the Austrian Supreme Court (“OGH”) had confirmed the lower instance decisions cancelling the Austrian figurative mark “SW Sophienwald” for being decriptive of its geographical origin for glassware and related goods in classes 14, 21 and 33 (decision of 26.11.2019, case 4 Ob 152/19k, please refer to my prior blog post here). One year ..read more

In February 2023, we reported the NIGHTWATCH decision of the Fourth Board of Appeal of the EUIPO addressing conversion of EUTMs, and more specifically, whether conversion can be filed where the EUTM (application) was withdrawn or surrendered after a first-instance decision refusing or invalidating it but before the appeal period has expired. The EUIPO in that situation required the appeal to be actually filed, while the Fourth Board saw that differently. For more background, we refer to our earlier post. Following that decision, the Executive Director (ED) of the EUIPO made a Referral  to ..read more

The International Association for the Protection of Intellectual Property (AIPPI) plays a crucial role in shaping intellectual property law worldwide with its diverse range of Standing Committees and its unique resolutions. Among these, resolutions on trade marks stand out for their impact on global trade mark law harmonisation and development. The Journey Begins: Study Questions The process of creating an AIPPI resolution starts with the formulation of a Study Question. These questions are carefully crafted to address specific issues or gaps in trade mark law that require international attent ..read more

All trademark news that you might have missed last month in one convenient overview. Read up on the latest news reported by the Kluwer IP Reporter. Albania adopts CP8 Common Practice With an aim to enhance transparency, legal certainty and predictability for the benefit all stakeholders, the General Directorate of Industrial Property (GDIP) of the Republic of Albania has recently updated its methodology by adopting the principles provided in the CP8 Common Practice “Use of a trade mark in a form differing from the one registered.” Read the full story here Belize joins Madrid e-Filing communit ..read more

Burning hot August day in the picturesque bay of Lindos (Rhodos/Greece) A recent decision of the Higher Regional Court Vienna (OLG Vienna), second – and often last – instance in cancellation and revocation proceedings in Austria, showcases the risks of a mismatch between trademark specifications and actual trademark use. We are all aware that EU trademark law allows for trademarks to be registered for a vast array of goods and services – initially – irrespective of its actual use. However, within five years from registration, the so-called “grace-period for non-use” ends and such trademarks ca ..read more

On June 17, 2024, in the Netherlands, 18 Benelux spirits trademarks owned by Russia – including those for the iconic vodka brands STOLICHNAYA, MOSKOVSKAYA, and NA ZDOROVYE – were auctioned off in one single lot for €1.6 million. Some of these trademarks are also registered at the EUIPO claiming seniority. Interestingly enough, the auction terms included also the copyrights related to the vodka trademarks. In 2022, these trademarks were seized to partially enforce the $50 billion arbitral award rendered in 2014 against Russia in favour of the former majority shareholders of the Yukos oil&ga ..read more

With its long-awaited BASMATI judgment of 20 June 2024, the CJEU dismissed EUIPO’s appeal. According to the CJEU, the GC was right to uphold Indo’s action. The cease of effect of the earlier right invoked in an opposition after the BoA decision the annulment of which is requested before the GC does not mean that the action to the GC loses its purpose, nor that the applicant before the GC loses its legitimate interest in bringing the case before the GC. For recollection, Indo European Foods brought an opposition against a third party’s EUTM application for the figurative mark as shown above th ..read more

The Manual IP, also known as the Brown Book, is a comprehensive publication. It covers a lot of information on patents/utility models, trademarks and designs for 240 jurisdictions around the world. To keep this information up to date is a large task for us as publisher, but also for the many local authors that review these chapters each year and make sure the latest information is available. Each year we put three companies in a spotlight for their exceptional cooperation on making the Manual IP such a big success. First of all, we have Ana de Sampaio and Nuno Gouveia of J.E. Dias Costa, who c ..read more

The jury award of $340,000 for lost profits was not excessive but the trial court gave improper jury instructions on punitive damages. Following a jury trial in Louisville, Kentucky that resulted in a mixed verdict, the federal appeals court in Cincinnati, Ohio has affirmed a jury award of $340,000 for lost profits on a trademark infringement claim over a baseball silhouette mark but vacated a punitive damages award of $67,650. The U.S. Court of Appeals for the Sixth Circuit concluded that the jury award of $340,000 for lost profits on the trademark infringement claim was not excessive and tha ..read more