Uniqlo Trading Co. Ltd. vs Guangzhou Compass Exhibition Service Co. Ltd. and Zhongwei Enterprise Management & Consultancy Co. Ltd., China Supreme Court: (2018) Zui Gao Fa Min Zai No. 396.
Over the years,More
United Kingdom: Sky’s Defensive Filings Partially Succumb to Skykick’s Bad-faith Claims
By Sahil Yadav
Sky Plc & Ors v SkyKick UK Ltd & Anr;[2020] EWHC 990 (Ch)
The UK High Court recently heard the Sky v. Skykick case ([2018] EWHC 155 (Ch)) case again after it had earlier referred it to the Court of Justice of the European Union (“CJEU”) to decide the validity of Sky’s registrations.More
EU & Japan: Brand Owners Encounter High Threshold to Register Single-Color Marks
Two recent decisions by the EU General Court and the IP High Court of Japan demonstrate the very high bar that brand owners face in registering a mark consisting exclusively of a single color.
I.More
EU: Fame as Determinative Factor in Likelihood-of-Confusion Analysis
Joined Cases C-449/18 P and C-474/18 P: EUIPO v Messi Cuccittini and P J.M.-E.V. e hijos v Messi Cuccittini (2020).
The Court of Justice of the European Union (“CJEU”) dismissed appeals against the General Court (“GC”)’s decision and confirmed that there was no likelihood of confusion between the marks MESSI and MASSI given the well-known reputation of the Argentine football player Lionel Messi.More
China: Facebook Loses Chinese Registrations in Fight Against Squatter
By Joseph A.R. Gerber
The China National Intellectual Property Administration (“CNIPA”) dealt two heavy blows to Facebook in February and March of this year. Not only did the CNIPA deny Facebook’s request to invalidate a prior registration for FACEBOOK by Dr. Su Kaiming,More
Chile: Domain Name Registration Revoked Based on Prior Trademark Rights
Banmédica S.A. v. Arbitrator, Corte de Apelaciones de Santiago, Chile. Case number C-14654-2019 (decision dated July 1, 2020).
On July 1, 2020, the Chilean Court of Appeal overturned an arbitrator’s decision granting the domain name “multimed.cl” due to Banamerica S.A.More
Canada: Use of a Mark for “Hotel Services” Does Not Require Brick-and-Mortar Hotel in Canada
Miller Thomson LLP v. Hilton Worldwide Holding LLP, 2020 FCA 134
Background
The first WALDORF-ASTORIA hotel opened in New York City in the 1930s, and it was acquired by Hilton Hotels Corporation in 1949,More
Brazil: Co-Ownership of Trademarks Now Available
One of several important changes resulting from Brazil’s accession to the Madrid Protocol is the availability of co-ownership of trademarks under a new regime that came into force on September 15, 2020, under Resolution 245/2019 (the “Resolution”) passed by the Brazilian Patent and Trademark Office (“BPTO”). More
Southern District of New York: Designer’s Own Clothes No Cover-Up for Copyright Infringement
By Julia Belagorudsky
Iantosca v. Elie Tahari (No. 19-cv-04527 (S.D.N.Y. Sept. 18, 2020)
With facts that were largely uncontested, the decision in Iantosca v. Elie Tahari) concisely addressed (and rejected) Tahari’s affirmative defenses that its reposting of a professional photographer’s photograph of a digital-content creator in head-to-toe Elie Tahari garb was not copyright infringement because (1) its use was fair use,More
Myanmar: October 1, 2020, “Soft Launch” for Trademark Applications
Our December 19, 2019, newsletter reported Myanmar’s “soft launch” of new trademark applications, which at the time was expected to commence on December 20, 2019. The new confirmed start date is now October 1, 2020. As noted in our earlier article,More