Bahamas accedes to Trademark Law Treaty

On 3 June 2025, the Government of the Commonwealth of The Bahamas acceded to the Trademark Law Treaty by depositing its instrument of accession with the Director General of the World Intellectual Property Organization.

Read the full article here

Bahamas accedes to Vienna Agreement

On 3 June 2025, the Government of the Commonwealth of The Bahamas acceded to the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (the Vienna Agreement) by depositing its instrument of accession with the Director General of the World Intellectual Property Organization.

Read the full article here

Bahamas accedes to Nice Agreement

On 3 September 2025, the Government of the Commonwealth of The Bahamas acceded to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks by depositing its instrument of accession with the Director General of the World Intellectual Property Organization. Thus, The Bahamas became the 94th contracting party to the Nice Agreement.

Read the full article here

Bahamas accedes to the Singapore Treaty on trademark law

On 3 June 2025, the Government of the Commonwealth of The Bahamas acceded to the Singapore Treaty on the Law of Trademarks by depositing its instrument of accession with the Director General of the World Intellectual Property Organization.

Read the full article here

Brazil announces IP fee increases and discounts 05/22/2025

On 22 May 2025, the Brazilian National Institute of Industrial Property (INPI) announced updates to its intellectual property fee structure, which will come into effect from 7 August 2025.

Read the full article here

Canada issues new AI disclosure rules for trademark proceedings

The Canadian Intellectual Property Office released, on 4 June 2025, a new practice notice requiring parties before the Trademarks Opposition Board (TMOB) to declare their use of generative artificial intelligence (AI) in documents submitted under section 11.13, 38, or 45 of the Trademarks Act.

Read the full article here

Hong Kong revises rules to streamline IP registration and litigation

On 23 May 2025, the Hong Kong Government gazetted amendments to the Rules of the High Court and subsidiary legislation for patents, registered designs and trademarks, aiming to streamline intellectual property litigation and registration processes.

Read the full article here

Hong Kong updates personal information collection statement

On 16 May 2025, the Intellectual Property Department (IPD) of the Hong Kong Special Administrative Region Government updated its Personal Information Collection Statement, with key revisions made to the sections on “Purposes of Collection” and “Classes of Transferees.”

Read the full article here

Hungary increases IP office fees across all categories

New official fees set by the Hungarian Intellectual Property Office came into effect on 13 April 2025, raising charges for filings, renewals and other procedures.

Read the full article here

Indian IP office shifts official website to new domain

On 21 May 2025, the Office of the Controller General of Patents, Designs Trade Marks (CGPDTM) in India announced a change in its official website domain.

Read the full article here

Madrid Protocol fees revised for Kazakhstan

In accordance with the provisions of the Common Regulations under the Madrid Agreement and Protocol concerning the International Registration of Marks, the Director General of the World Intellectual Property Organization on 28 May 2025 announced the revised individual fees payable when Kazakhstan is designated in an international application or in an application for renewal of international registration or is a subject of subsequent designation.

Read the full article here

Mediation services extended for all EUIPO inter partes proceedings

On 2 June 2025, the European Union Intellectual Property Office (EUIPO) extended its mediation services to cover all inter partes proceedings, including first and second instance EU trademark opposition and cancellation cases, as well as registered EU design invalidity matters

Read the full article here

New Zealand updates trademark practice guidelines

On 29 May 2025, the Intellectual Property Office of New Zealand (IPONZ) updated its Conflicting Goods and Services List under the practice guidelines relating to identical or similar trademarks.

Read the full article here

UAE launches first federal Geographical Indications system

With an aim to safeguard and promote products linked to specific regions within the country and to offer legal protection to goods with distinct qualities tied to their geographic origin, the United Arab Emirates (UAE) Ministry of Economy officially launched the country’s first geographical indications (GI) system on 12 May 2025.

Read the full article here

USPTO to launch southeast regional outreach office from Alexandria

The United States Patent and Trademark Office (USPTO) on 6 June 2025 announced it will begin operating the Southeast Regional Outreach Office from its headquarters in Alexandria, Virginia.

Read the full article here

WIPO launches beta version of new eMadrid platform

On 20 May 2025, the World Intellectual Property Organization (WIPO) released a beta version of the redesigned eMadrid platform for filing and managing international trademarks.

Read the full article here

Zanzibar starts using HDB in TMclasss

On 23 May 2025, the Zanzibar Business and Property Registration Agency (BPRA) joined TMclass and began accepting the list of terms from the Common Harmonised Database on Classification of Goods and Services (HDB) in TMclass

Read the full article here

More from our authors:

	Trade Mark Law in Europe: Case Law of the Court of Justice of the European Union, Fourth Edition by Ulrich Hildebrandt € 176
	Concise European Design Law by Verena von Bomhard and Alexander von Mühlendahl € 125

The Applicant, VistaJet ltd., applied for a position mark consisting “of a horizontal red stripe on a silver fuselage” which “runs from the nose to the tail of an airplane through the middle of the fuselage, above the wings” in connection to inter alia private aircraft charter services. The application was found to be devoid of distinctive character and rejected by the EUIPO. The appeal to the Board of Appeal was dismissed on the same ground.

When making the distinctiveness assessment the General Court referred to the case law on three-dimensional marks. The key reason for that being that both types of marks and how the product they denote looks are intrinsically connected.

The General Court was of the view that the applied for mark would be seen as a decoration. They highlighted the simplicity of the geometric shape in question and the colour red being a popular decorative choice. They were also of the opinion that the silver colour of the fuselage (rather than commonly used colour white) would likely be unnoticed by the consumers.

It was emphasized that it is not enough to show that the applied for mark is not simply a geometric shape. In order for the mark to be distinctive, it needs to have easily memorisable features which would indicate to the consumers that the sign is a trade mark.

In their contested decision, the Board of Appeal raised the potential of distinctive character being obtained by a mark comprised of several simple geometric shapes but noted that the addition of a commonly used colour would not suffice.

Whilst the General Court agreed with the Applicant that the relevant consumers of their products would pay a high degree of attention, they rejected the notion that this degree of attention would always allow simplistic marks to overcome the distinctiveness hurdle. They did, however, recognise that there are circumstances where the relevant consumer specialisation is decisive.

The Court’s position was that for the overly simplistic marks, the only way to overcome the distinctiveness objection is to show that the mark has acquired distinctiveness through use.

The General Court decision also assessed the materials which can be taken into account at different decision stages. It was highlighted that once an EUIPO Examiner’s decision on absolute grounds is challenged, the Examiners/Judges can only look at the materials submitted by the parties to the proceedings.

Thus, whilst the written arguments can be helpful to “paint the picture”, as the Examiner/Judges are not able to refer to anything outside of submitted materials, the burden of proof falls on the applicant to support their arguments with evidence.

The applicant in this matter appears to have relied mostly on written submissions. The Examiner’s decision mentions screenshots of livery designs and an exhibit, the applicant submitted very minimal amount of additional evidence to the Board of Appeal. This case is therefore a reminder on the important of evidence is in such cases. The Examiner’s initial research revealed other parties which used red stripes on their liveries, thus indicating that this is a common design element used on the planes. Without strong evidence which disproves this assumption, success in overcoming distinctiveness objection of a very simple sign is very unlikely.

This decision highlights that if the applied for sign is very simplistic, there a heavy evidential burden on the applicant to show that their mark should be accepted for registration. The level of attention paid by the relevant consumers will unlikely help such mark with meeting the distinctiveness threshold. But additional easily memorisable features could possibly achieve that.

[1] VistaJet ltd. v EUIPO, T 195/24 (05 Feb 2025)

More from our authors:

	Trade Mark Law in Europe: Case Law of the Court of Justice of the European Union, Fourth Edition by Ulrich Hildebrandt € 176
	Concise European Design Law by Verena von Bomhard and Alexander von Mühlendahl € 125

How different do “animal trademarks” need to be to coexist in the Swiss market? A recent decision from the Swiss Federal Administrative Court offers a compelling answer, resolving a dispute between SEAT S.A. and the trademark “Sea Lion” (fig.), both registered for vehicles and related components under Class 12.

SEAT opposed the registration of “Sea Lion,” arguing that it infringed on its established trademark “SEAT LEON.” On the surface, the case seemed straightforward: both marks contain the word “lion” (or its Spanish equivalent “LEON”), relate to similar goods, and carry strong, evocative imagery. However, the court found that these commonalities did not amount to a likelihood of confusion.

The court emphasized that Class 12 goods, motor vehicles and their components, are expensive, durable, and typically purchased with a high level of consumer attention. This significantly lowers the potential for confusion, even where some similarities between trademarks exist.

Although “Sea Lion” covered goods related to SEAT’s offerings, the court focused on the distinctiveness of the marks. It examined the protection granted to the “SEAT LEON” trademark. While SEAT is a well-known car brand in Switzerland, this did not automatically extend enhanced protection to “SEAT LEON.” The term “LEON” was seen as a model designation rather than a core brand element. In contrast, “Sea Lion” evoked an image unrelated to vehicles. The court found the distinctiveness of “SEAT LEON” to be average. SEAT’s attempts to prove broader recognition of “LEON” lacked strong evidence, relying mostly on media references and marketing materials without consumer studies or substantial sales data.

The court’s analysis also delved into the phonetic and visual aspects of the trademarks. While acknowledging that both “SEAT LEON” and “Sea Lion” share certain auditory overlaps, particularly with the repetition of “lion,” it determined that these similarities were insufficient to confuse a discerning consumer. The juxtaposition of “SEAT,” a recognized automotive brand component, against “Sea,” a term indisputably tied to marine imagery, created a stark conceptual divide. Similarly, the visual representation of “Sea Lion,” which incorporated symbolic elements evocative of aquatic life, further distanced the mark from any automotive connotations tied to SEAT’s brand. Consequently, SEAT’s opposition was dismissed, and the “Sea Lion (fig.)” trademark proceeded to registration under the Madrid Protocol.

This ruling is a powerful reminder that in trademark law, not all creatures are treated equal, especially when sea lions and Spanish horse- or rather lion-power swim in the same legal waters. The decision seems notably strict, given the undeniable visual similarities between the signs and the awareness of the brand/car model SEAT LEON. It emphasizes the importance of conceptual differences for Swiss Courts and the need to present strong evidence of a brand’s awareness and increased distinctiveness. This is crucial in opposition proceedings, even if you think your trademark is well-known. Convincing Swiss-specific evidence, particularly for the exact product brand and solid sales figures, is essential.

Written by Peter Schramm and Linda Cetkovic on Thursday June 5, 2025

More from our authors:

	Trade Mark Law in Europe: Case Law of the Court of Justice of the European Union, Fourth Edition by Ulrich Hildebrandt € 176
	Concise European Design Law by Verena von Bomhard and Alexander von Mühlendahl € 125

Chetyre Lapy vs Kormotech

On 21 January 2025, the Specialized Interdistrict Economic Court of Astana issued its decision in Chetyre Lapy vs Kormotech, granting the Russian company’s claim to cancel legal protection in Kazakhstan for the trademark “КЛУБ 4 ЛАПИ” (International Registration № 1013370). The challenge was based on alleged non-use for goods and services in Classes 16, 28, 31, 41, and 44 of the Nice Classification.

The claim relied on Article 1028 of the Civil Code of the Republic of Kazakhstan and Article 19 of the Law on Trademarks of Kazakhstan, which allow cancellation of a trademark if it has not been used for three consecutive years prior to the filing, without valid reason.

The motive behind the action was clearly commercial. Chetyre Lapy stated that it had filed its own international trademark application № 1757147, based on Russian registration № 464085, and intended to expand its business operations in Kazakhstan. The similarity between the marks, it argued, meant that the continued protection of Kormotech’s trademark presented a barrier to entering the local market.

The plaintiff further asserted that Kormotech had no local presence, distributor, or commercial activity in Kazakhstan. Thus, the mark had not been genuinely used.

The court agreed, finding no evidence of trademark use in Kazakhstan within the relevant period and noting the absence of licensing or assignment agreements. Applying the relevant provisions of the national law, it ordered cancellation of the trademark for all specified classes.

Courtroom Dynamics and Procedural Context

Kormotech, despite being properly notified of the proceedings by the court, failed to appear or to submit any written position. Consequently, the court proceeded in its absence. During the hearing, the judge asked the plaintiff whether any attempts had been made to resolve the dispute amicably. Chetyre Lapy responded that such efforts were not feasible, given the ongoing war in Ukraine.

The National Institute of Intellectual Property (Kazpatent) was also named as a defendant – a practice often employed by claimants in non-use cancellation cases when the trademark owner is located abroad or difficult to reach. In such instances, Kazpatent is included as the authority responsible for executing the court’s decision to annul a trademark registration. However, Kazpatent clarified that its mandate does not include monitoring the use of trademarks in the market. The court agreed and dismissed the claim against the Institute as unfounded.

Implications and Strategic Dimensions

This case partially follows a pattern previously explored in Parts I & II, where Russian companies initiate legal actions (often invoking non-use claims) to clear the path for filing similar marks in Kazakhstan. These actions are frequently undertaken by entities that had no prior presence in the local market and often follow the breakdown of political or commercial ties with foreign rights holders.

Although the Kormotech dispute does not qualify as a classic case of squatting, since the Russian claimant relied on its own trademark rather than attempting to “hijack” an existing one, it reflects a legal strategy that is both commercial and geopolitical. In the post-2022 environment, the breakdown of cross-border relations has not only impeded the possibility of negotiation, but has also created conditions in which companies can pursue legal actions with reduced risk of opposition or engagement from the other side.

Conclusion

The Kormotech case illustrates how Kazakhstan’s trademark system, as the jurisdiction where protection was granted, can become a setting for disputes that unfold against the backdrop of broader geopolitical tensions. While the court’s decision strictly followed the applicable legal provisions on non-use, the ongoing conflict between Russia and Ukraine has complicated traditional channels of communication and dispute resolution. In such circumstances, businesses are adapting their legal strategies to the realities of limited cross-border engagement, including by initiating proceedings that might otherwise have been resolved through negotiation.

More from our authors:

	Trade Mark Law in Europe: Case Law of the Court of Justice of the European Union, Fourth Edition by Ulrich Hildebrandt € 176
	Concise European Design Law by Verena von Bomhard and Alexander von Mühlendahl € 125

For illustrative purposes, the respective marks are displayed below:

Upon even a superficial inspection, one can conclude that these marks are confusingly similar. It is worth detailing how the judge in first instance arrived at this conclusion. They went through the usual factors that determine if there was a likelihood of confusion, namely: the marks must appear confusingly similar to the average consumer; the average consumer will perceive the mark as a whole, irrespective of nuances; marks should be considered with regards to their overall impression while taking into account any dominant elements; the similarity of goods and services covered by the marks; if the earlier mark has a highly distinctive character; mere association between the marks is insufficient; prior reputation of a mark alone does not give rise to a likelihood of confusion; and if association between the marks leads a consumer to believe the businesses are economically linked. In assessing these factors, the judge ruled that there was a likelihood of confusion.

The Defendants appealed this judgment on these grounds: the definition of average consumer (most, not only the defendants felt the judgment was incorrect in this respect); the degree to which the marks appear highly similar (most felt that the names of each store were different enough to eliminate any confusion); the conceptual comparison of the marks; the context of use of the marks; the effect of the 2018 agreement; the effect of this agreement on the franchisee Defendants; breach of this agreement by the Claimant; and the similarity of other marks used by the Defendants (namely the MMM trade mark) to the Claimant’s mark pictured above.

The Defendant submitted that the judge erred in determining the relevant class of consumer as they categorised them as low-income households and people out late at night, usually intoxicated, and looking for a quick, cheap meal. Lord Justice Arnold maintained that, even if this categorisation were inaccurate, it had no impact on the finding of the marks to be confusingly similar. The argument on degree of similarity was easily dismissed due to factors such as the colours, fonts, tagline, etc. Any argument against the contextual comparison was easily dismissed because the wording of each tagline of the marks rendered the subject matter similar. Context of use was also dismissed as these marks were both found on restaurant facias, menus, etc. With regards to the 2018 Agreement, at the time of the agreement, the Defendant agreed to use this mark:

Given the differences between this and Metro’s mark seen further above, Lord Justice Arnold found the agreement did not encompass the Defendant’s mark in its current form. As for the impact of this agreement on the franchisee Defendants, he ruled that this agreement did not apply to them as they were not expressly named in the agreement. Any claims of breach of this agreement by the Claimant were dismissed on the same grounds that were used to dismiss the arguments that the Defendant(s) had not breached this agreement. Finally, the Defendants used further marks including the “mmm” element from the Morley’s mark. It was maintained that this mark was still confusingly similar.

The main takeaway from this is brand owners can see that a mere lookalike can lead to confusion irrespective of the brand names. While this has not changed the position for establishing likelihood of confusion, it has provided a textbook example of what constitutes likelihood of confusion.

More from our authors:

	Trade Mark Law in Europe: Case Law of the Court of Justice of the European Union, Fourth Edition by Ulrich Hildebrandt € 176
	Concise European Design Law by Verena von Bomhard and Alexander von Mühlendahl € 125

TikTok argued that the order rejecting the recognition of TikTok as a well-known trademark was erroneous. In particular they argued that the cited order relates to Section 9 of the Trademarks Act (pertaining to absolute grounds for refusal of registration) while only Section 11 was relevant in regard to the determination of recognition of well-known marks. There was also a lack of discussion in regard to the factors outlined under Section 11(6) of the aforementioned act which talks about the considerations to be taken into account while determining whether a mark is well-known, such as recognition of the mark.

The registrar asserted that the government ban under the Information Technology Act was a relevant factor under section 11(6) of the act, which allows in its wording for the registrar to consider “any fact which he considers relevant”. Any list of considerations enumerated in the section was simply illustrative and not exhaustive.

Justice Manish Pitale (High Court) upheld the point of view put forth by the registrar in this matter while acknowledging the registrar’s erroneous reliance on section 9.  The court stated that while this reliance was wrongful, it was not enough to set aside the impugned order. Most importantly, the court was of the view that under section 11(6), the registrar has the power to “take into account any fact which he deems relevant.” Going on to state that issues of data privacy, national security and allegations of cyberbullying may be deemed relevant facts which the registrar may consider.

This expansive reading of the term “any fact” mentioned in section 11(6) raises legal and practical concerns. If Section 11(6) is read with rule 124 it suggests that the recognition of mark as well known is key and factors like “national security” and foreign policy considerations are not relevant. Moreover section 11(9)(i), states that a lack of use in India cannot be a bar to the recognition of a mark. This judgement finds it grounds in subjective morality and national policy rather than an objective analysis of public recognition setting a precedent which is problematic. In fact, courts have protected trademarks which have been banned or are unavailable for use in India such as  Playboy Enterprises v. Bharat Malik, (mark recognized despite a ban in India) and Kamal Trading Co. and Ors. v. Gillette U.K. Ltd. (where the mark was protected despite no use in India). It was perception of the consumer that was regarded as key in these cases.

In this particular matter, the Trade Mark Office and the Bombay High Court should have applied the logic laid down in the aforementioned judgements since TikTok is a household name with considerable recognition across India since both before and after it’s ban. Legal status or bans should not be weighed as consideration while considering the status of mark as well-known. Such a ban may be temporary and applying the law will have major practical implications including dilution of the well-recognised mark. Orders such as the ban on TikTok are not judicial considerations but transient executive orders.

Conclusion

The judgment provided by the high court  in TikTok Ltd. v. Registrar of Trademarks stretches the language of section 11(6) beyond its basis of recognition of marks on the basis of their consumer perception. It sets a troubling precedent which is contradictory to the judgement passed by the High Courts of Delhi and Bombay in the Playboy and Gillette cases, laying down that trademark protection by courts and the registrar is overridden by executive bans and national policy. Brand owners may need to take this into account when making applications for well-known status.

More from our authors:

	Trade Mark Law in Europe: Case Law of the Court of Justice of the European Union, Fourth Edition by Ulrich Hildebrandt € 176
	Concise European Design Law by Verena von Bomhard and Alexander von Mühlendahl € 125

The U.S. Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (TTAB) decision partially canceling two of Dollar Financial Group, Inc.’s (DFG) registered trademarks covering pawn brokerage and pawn shop services. The appellate court upheld TTAB’s findings that Brittex Financial, Inc. had prior common law rights in its MONEY MART PAWN and MONEY MART PAWN JEWELRY marks for pawn services and that Dollar Financial could not rely on the zone of natural expansion doctrine to establish priority. The court also affirmed TTAB’s determination that the likelihood of confusion factors under In re E.I. DuPont DeNemours Co., 476 F.2d 1357 (C.C.P.A. 1973), weighed in favor of a likelihood of confusion (Dollar Financial Group, Inc. v. Brittex Financial, Inc., No. 23-1375 (Fed. Cir. Mar. 19, 2025)).

Case date: 19 March 2025
Case number: No. 23-1375
Court: United States Court of Appeals, Federal Circuit

A full summary of this case has been published on Kluwer IP Law

More from our authors:

	Trade Mark Law in Europe: Case Law of the Court of Justice of the European Union, Fourth Edition by Ulrich Hildebrandt € 176
	Concise European Design Law by Verena von Bomhard and Alexander von Mühlendahl € 125

The Traditional Test: Passive Platforms Are Not Liable

For years, the Court of Justice of the European Union (CJEU) maintained that online marketplaces are not directly liable for trademark infringement when they merely host third-party content—provided they remain passive. This line of reasoning was established in key cases:

Google France v. Louis Vuitton: hosting providers are not liable for trademark infringement unless they have actual knowledge of illegal activity and fail to act swiftly.

L’Oréal v. eBay: eBay was not “using” the trademarks itself but merely provided a platform for others to do so.

Coty Germany v. Amazon: Amazon was not liable simply for warehousing products unless it also offered them for sale on its own account.

In all of these cases, the dividing line was clear: if the marketplace’s actions were technical, automatic and passive, they were not responsible for infringement.

The Turning Point: Louboutin v. Amazon

This position was challenged in the Louboutin v. Amazon judgment. Christian Louboutin, known for his iconic red-soled shoes, argued that Amazon did more than just host third-party listings—it actively designed sales offers, controlled shipping, and displayed ads featuring the disputed goods in ways that blurred the lines between third-party and Amazon listings.

The CJEU agreed that such involvement could constitute “use” of a trademark under EU law. Importantly, the Court highlighted the consumer’s perception: if a reasonably observant user cannot distinguish between Amazon’s role and the third-party seller’s, the marketplace might indeed be liable. This reflects a broader trend in EU jurisprudence: liability can arise when platforms integrate and promote listings as part of their own commercial activity.

Parallel Developments in Copyright and National Laws

This evolving “active role” doctrine is not limited to trademark law. In copyright cases like Elsevier v. Cyando, the CJEU confirmed that platforms optimizing or promoting content play an active role and may be held responsible. National courts have adopted a similar logic:

In the Manhattan Bridge case, the German Supreme Court concluded that platforms with an economic interest in infringing goods (like charging seller fees) could be liable.

In France, courts ruled that guarantees like “100% authenticity” and authentication services implied a commercial endorsement, making platforms liable.

The UK Supreme Court in Lifestyle Equities v. Amazon established liability based on whether a “reasonably observant user” links the platform’s services with the trademarked goods.

What Lies Ahead: Knowledge, Control, and the DSA

The next frontier for courts—especially the CJEU—will be clarifying the role of knowledge in establishing liability. Unlike direct infringement, which does not require intent, contributory infringement hinges on whether a platform intentionally induced the violation or knew (or should have known) about it.

However, the Digital Services Act (DSA) adds another layer: it specifies that general awareness of illegal content does not equal actual knowledge. This could mean that a marketplace will only be liable if there is clear evidence of awareness and inaction.

Conclusion: Toward a New Standard

The Louboutin judgment and related cases represent a shift away from the “passive host” framework. The emerging judicial test is more nuanced and context-specific, looking at how integrated the platform is in the transaction, how listings are presented, and what consumers reasonably perceive.

In short, online marketplaces are no longer invisible back-end platforms. As they become more embedded in the buying process—through fulfilment, advertising, and branding—the courts are increasingly likely to see them as trademark users themselves, and therefore, potentially liable.

Expect the CJEU to continue refining this standard in the coming years, especially as the DSA reshapes digital liability rules across the EU. The message is clear: in the online marketplace, responsibility follows control.

More from our authors:

	Trade Mark Law in Europe: Case Law of the Court of Justice of the European Union, Fourth Edition by Ulrich Hildebrandt € 176
	Concise European Design Law by Verena von Bomhard and Alexander von Mühlendahl € 125

Bahrain adopts 12th edition of NICE Classification

On 9 April 2025, the Kingdom of Bahrain officially implemented the 12th edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks (NICE Classification).

Read the full article here

Brazil launches global survey on monetization of Brazilian IP assets

On 6 May 2025, the Brazilian Industrial Property National Institute (INPI) launched an international survey on monetizing intellectual property assets in Brazil during the Licensing Executives Society International (LESI) Annual Conference in Singapore.

Read the full article here

China, Azerbaijan sign IP cooperation agreement

On 23 April 2025, the National Intellectual Property Administration of China and the Intellectual Property Agency of Azerbaijan signed a Memorandum of Understanding in Beijing to strengthen collaboration on intellectual property.

Read the full article here

China releases 2025 plan to strengthen its IP ecosystem

On 12 May 2025, the National Intellectual Property Administration (NIPA) of China published the 2025 Promotion Plan for Intellectual Property Powerhouse Construction, outlining 118 tasks to strengthen the country’s IP system

Read the full article here

EUIPO wins domain name dispute over fraudulent EUIPP.com domain

The Czech Arbitration Court’s Uniform Domain-Name Dispute-Resolution Policy (UDRP) Panel ruled in favor of the European Union Intellectual Property Office (EUIPO) by canceling the domain name euipp.com due to typosquatting and fraudulent activities impersonating the EUIPO.

Read the full article here

EU General Court rejects AirPlus opposition against Repsol’s ‘R+’ trademark

On 30 April 2025, the General Court of the European Union (GCEU) upheld the European Union Intellectual Property Office’s (EUIPO’s) decision rejecting AirPlus International’s opposition to Repsol’s trademark application for ‘R+’, finding no likelihood of confusion between the marks.

Read the full article here

India, WIPO launch partnership to enhance IP analytics capacity

On 5 May 2025, India’s Office of the Controller General of Patents, Designs and Trade Marks (CGPDTM) and the World Intellectual Property Organization (WIPO) signed a Letter of Intent to improve IP analytics capabilities across Indian government agencies.

Read the full article here

Nintendo sues Genki alleging infringement of Nintendo Switch 2 mark

On 2 May 2025, Nintendo filed a lawsuit in the U.S. District Court for the Central District of California against Genki, accusing the accessory maker of trademark infringement, unfair competition and false advertising after Genki displayed unauthorized mock-ups of the unreleased Nintendo Switch 2

Read the full article here

Registered trademark licenses trump unregistered rights, rules Korean apex court

On 27 March 2025, the Korean Supreme Court held in Case No. 2024Da306691 that an unregistered non-exclusive trademark license cannot be enforced against a later-registered exclusive licensee, even if the unregistered license predates it.

Read the full article here

Syria hikes trademark and design publication fees

On 28 April 2025, the Syrian Trademark Office implemented a major increase in publication fees for trademarks and designs under Ministerial Decision 1448/2025.

Read the full article here

Taiwan updates concordance tables for trademark classifications

The Taiwan Intellectual Property Office (TIPO) has recently released updated Taiwan-Japan and Taiwan-Korea concordance tables to reflect the 2025 version of the 12th edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification) released by the World Intellectual Property Organization.

Read the full article here

Trademark certificates for Mexico now downloadable under Madrid Protocol

On 17 April 2025, the Mexican Institute of Industrial Property (IMPI) notified the World Intellectual Property Organization (WIPO) that national registration certificates for international marks protected in Mexico under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) are available for free download from IMPI’s website.

Read the full article here

UK to end series trademark applications in upcoming digital overhaul

The United Kingdom Intellectual Property Office (UKIPO) has recently confirmed that it will discontinue its series trademark service for new filings as part of its digital transformation efforts.

Read the full article here

USPTO launches new TTAB filing option for cancellation petitions

On 12 May 2025, the United States Patent and Trademark Office launched a new feature in TTAB Center allowing users to file petitions for cancellation online with the Trademark Trial and Appeal Board (TTAB).

Read the full article here

USPTO seeks feedback on OECD e-commerce anti-counterfeit guidelines

On 16 May 2025, the United States Patent and Trademark Office (USPTO) issued a notice in the Federal Register requesting public comments on draft Organization for Economic Cooperation and Development’s (OECD’s) guidelines to combat counterfeit goods on online marketplaces

Read the full article here

More from our authors:

	Trade Mark Law in Europe: Case Law of the Court of Justice of the European Union, Fourth Edition by Ulrich Hildebrandt € 176
	Concise European Design Law by Verena von Bomhard and Alexander von Mühlendahl € 125

By judgment of 30 April 2025, the General Court of the European Union upheld the decision of the First Board of Appeal of the EUIPO finding a likelihood of confusion between the two figurative trademarks “GEICAR” and “hey car select” (Case T‑338/24). The services at issue were car dealership, general business and marketing, and car rental services in classes 35 and 39.

The earlier mark was registered in Spain, the contested trademark (hey car select) was an EU designation under an IR. Like the Board, the Court recognized that the marks were visually and conceptually dissimilar-

However, it held that in Spain, “GEICAR” and “hey car” would be pronounced virtually identically. As regards the additional element “select” in the contested mark, the Court stated (at para. 69) that “the importance [thereof] must be put into perspective due to its weak distinctive character”. It therefore endorsed the finding of a high degree of aural similarity. The fact that also “car” is weakly distinctive in Spain for car dealerships (fact which the Court recognized) was not a part of this equation.

As regards the services, the earlier Spanish mark was registered (in essence) for wholesale and retail services relating to new and used cars, and for “services provided by a franchisor, specifically assistance in the operation or management of industrial or commercial enterprises”, all in class 35. For the purposes of the opposition proceedings, the earlier mark was not subject to use requirements and so the services of the registration had to be taken at face value. Similarly, there was no mention of a national non-use cancellation action ever having been filed against the earlier Spanish mark.

The car dealership and car rental services in classes 35 and 39 covered by the contested mark were identical or highly similar to those of the earlier mark. The general business services including office functions and advertising, marketing and promotional services were considered similar, at least to a low degree, to the broadly described franchisor services covered by the earlier mark.

Apparently, the holder of the contested mark did not dispute, and the Court also endorsed, the Board’s finding that “particular importance should be given to phonetic similarity, since the services at issue may be recommended and be the subject of oral advertising, in particular on the radio” (para. 84 of the GC judgment). This may well be true for car dealers and car rentals, although it appears unlikely that any consumers make purchasing decisions relating to either based purely on “GEI / hey” heard on the radio. Moreover, radio commercials are rare if not non-existent for B2B services. PR agencies and the like do not usually advertise their services over the radio, and their brands are usually encountered visually (namely, on paperwork or on the web). Yet, neither the Board nor the Court differentiated between the services when assuming that all of them “may be the subject of oral advertising” and, for that reason alone, considering that the phonetic similarity alone could lead to confusion.

All in all, the Court concluded that there was a likelihood of confusion. The increased level of attention paid by customers for vehicles as well as by customers for business services such as advertising services or office functions did not prevent this.

The result seems counterintuitive – even though all three instances were aligned: already the Opposition Division had considered the marks to be confusingly similar. The case certainly reminds us how important it is to take into account local phonetics and that, at least in the EU, trademarks are often dissected into bits and pieces when assessing similarity, with similarity in certain aspects or isolated pieces only being enough to lead to a finding of likelihood of confusion.

“PS – With thanks to Madelene Bauer, currently intern at BomhardIP, for her valuable contribution!”

More from our authors:

	Trade Mark Law in Europe: Case Law of the Court of Justice of the European Union, Fourth Edition by Ulrich Hildebrandt € 176
	Concise European Design Law by Verena von Bomhard and Alexander von Mühlendahl € 125

On 10 April 2025, Advocate General (AG) Cápeta delivered her opinion in the matter EUIPO v Nowhere, C-337/22 P, also referred to as APE TEES. The opinion is both surprising and concerning. If the CJEU were to adopt AG Cápeta’s views, this would mean a complete overhaul of EU trademark law as we know it, and not for the better. Formalism would win over commercial logic and needs.

There is reasonable doubt that the CJEU will follow AG Cápeta’s opinion, as this is not only contrary to the SHOPPI decision of the General Court (see here and here) and the opinion of AG Szpunar in the BASMATI case (C-801/21 P) but – in this author’s understanding – the BASMATI decision itself, see the previous blog here.

For recollection, the Nowhere case concerns an opposition against an EUTM application (from 2015) for the device shown above. The opponent invoked an earlier unregistered trademark right in the UK. The Board of Appeal decided on 10 February 2021, i.e. after the transition period for Brexit (which ended 31 December 2020). In line with the consistent practice of the Office, the Board rejected the opposition, because, following Brexit, UK rights can no longer be held against EUTM applications.

Much to everyone’s surprise, the GC annulled the Board’s decision. According to the GC, what mattered was whether the prior right existed at the time of the application for the contested mark. The EUIPO’s appealed to the CJEU was allowed to proceed (see report here).

AG Cápeta suggests that EUIPO’s appeal must be dismissed because there was a “significant period of potential conflict”, namely, from the date of the EUTM application until 31 December 2020. She emphasizes that trademarks that survive an opposition are registered with effect from the filing date and concludes that, even where the earlier right loses its validity during the proceedings, there would have been a “potential co-existence” between the marks during some time.

One is tempted to ask – so what? The purpose of an opposition is to avoid registration. Article 8 EUTMR contains “grounds for refusal” of registration of an application. There is no reason for refusal if, at the time the final decision is taken, there is no earlier right.

The AG appears to confuse the situation on the register with that on the marketplace. In Cooper International (C-622/18, judgment of 26 March 2020), the CJEU ruled that the owner of a trademark that has been revoked can still claim damages from users of infringing signs for the time when the mark was valid – even if the earlier mark was never used. Whether one likes that position, which seems to incentivize defensive filings, it is the law as it stands.

However, there is no reason to apply this backward-looking concept to opposition proceedings. Whether the infringing sign is registered as a trademark has no impact on possible retroactive damage claims. As the CJEU has repeatedly stated (for EUTMs: C-561/11 – FCI FEDERATION CYNOLOGIQUE INTERNATIONALE, for national marks: C-491/14 – Rosa dels Vents, for EU designs C-488/10 – Celaya), registration of trademark (or design) rights in the EU provides no affirmative right to use.

Therefore, granting an opposition based on an earlier right that no longer exists serves nobody’s interests. Whether there was, at some point, a ground for refusal is irrelevant. What matters is whether there is one when the decision is taken.

BASMATI concerned a case where the Board had decided before the end of the transition period. The same is true for the recent judgment in Dr. August Wolff v EUIPO (T-679/20, 30 April 2025). However, where the earlier right loses its effect during the proceedings before the Office, the outcome should be that the opposition or invalidity action based on it is rejected. Why else would one bring non-use cancellation actions if the earlier mark runs into the use requirement during the course of the proceedings, requesting suspension? This is a practice that the GC has endorsed – or even required – on numerous occasions.

So – hold your breath everyone. The last word is yet to be spoken, and there is good reason to hope that the CJEU will get this one right!

More from our authors:

	Trade Mark Law in Europe: Case Law of the Court of Justice of the European Union, Fourth Edition by Ulrich Hildebrandt € 176
	Concise European Design Law by Verena von Bomhard and Alexander von Mühlendahl € 125

The U.S. Court of Appeals for the Federal Circuit affirmed a TTAB decision dismissing an opposition filed by Heritage Alliance and AFA Action, Inc. against American Policy Roundtable’s (APR) application for registration of the marks “iVoters” and “iVoters.com” (both standard characters) for online political information services under International Class 35. The Federal Circuit found that while Heritage established priority of use, it failed to show that its own “iVoterGuide” and “iVoterGuide.com” marks were distinctive or had acquired distinctiveness under §2(d) of the Lanham Act. The court also upheld the Board’s finding that APR had effectively conceded a likelihood of confusion, but concluded that Heritage could not block registration without demonstrating protectable rights in its prior marks (Heritage Alliance v. American Policy Roundtable, No. 24-1155 (Fed. Cir. Apr. 9, 2025)).

Case date: 09 April 2025
Case number: No. 24-1155
Court: United States Court of Appeals, Federal Circuit

A full summary of this case has been published on Kluwer IP Law

More from our authors:

	Trade Mark Law in Europe: Case Law of the Court of Justice of the European Union, Fourth Edition by Ulrich Hildebrandt € 176
	Concise European Design Law by Verena von Bomhard and Alexander von Mühlendahl € 125

Australia launches pilot tool to simplify IP enforcement

The Intellectual Property Office in Australia (IP Australia) has recently introduced “IP First Response”, a digital tool designed to assist small and medium sized enterprises (SMEs) and intellectual property (IP) rights holders in understanding enforcement options for patents and trademarks.

Read the full article here

Benelux launches nine upgraded e-services

On 8 April 2025, the Benelux Office for Intellectual Property (BOIP), supported by the European Union Intellectual Property Office (EUIPO), launched a new version of nine electronic services, including Opposition and Transfer of Rights.

Read the full article here

Bosnia and Herzegovina implements common practices CP9

The Institute for Intellectual Property (IIP) of Bosnia and Herzegovina, in collaboration with the European Union Intellectual Property Office (EUIPO), has implemented the Common Practice 9 (CP9) through a joint practice paper on the distinctiveness of three-dimensional marks containing verbal and/or figurative elements when the shape itself lacks distinctiveness.

Read the full article here

China and Hungary launch pilot for IP consultation support

The China National Intellectual Property Administration (CNIPA) and the Hungarian Intellectual Property Office (HIPO) have recently launched a pilot project for the HIPO-CNIPA Focal Point Mechanism, and the project will be in force from 1 April 2025 to 31 March 2026.

Read the full article here

Colombia updates rules for color claims in trademarks

From 7 January 2025 Colombia’s Superintendence of Industry and Commerce implemented new rules for claiming colors in trademarks through Decision 122 of 2025.

Read the full article here

France, Monaco sign MOU to strengthen IP cooperation

On 27 March 2025, a memorandum of understanding was signed between France’s National Institute of Industrial Property (INPI) and Monaco’s Industrial Property Division (DPI) to enhance collaboration in intellectual property.

Read the full article here

GCEU upholds revocation of AMSTERDAM POPPERS trademark

In the trademark dispute between Funline International Corp. and MS Trade s. r. o., the General Court of the European Union (GCEU) on 12 March 2025 affirmed the European Union Intellectual Property Office (EUIPO) Board of Appeal’s decision to revoke the AMSTERDAM POPPERS trademark for lack of genuine use under Article 58(1)(a) EUTMR.

Read the full article here

German IP office to stop accepting Union design applications

On 14 April 2025, the President of the German Patent and Trade Mark Office announced that, effective 1 May 2025, applications for Union designs can only be submitted to the European Union Intellectual Property Office (EUIPO), no longer to the German Patent and Trade Mark Office.

Read the full article here

Portugal, Spain sign action plan for IP cooperation

On 19 March 2025 the National Institute of Industrial Property (INPI) and the Spanish Patent and Trademark Office (OEPM) signed an Action Plan to implement various initiatives aimed at strengthening their collaboration throughout the year

Read the full article here

More from our authors:

	Trade Mark Law in Europe: Case Law of the Court of Justice of the European Union, Fourth Edition by Ulrich Hildebrandt € 176
	Concise European Design Law by Verena von Bomhard and Alexander von Mühlendahl € 125

The Arguments: Non-Use or Bad Faith?

LLC R-Climate filed a lawsuit before the Intellectual Property Court (IPC) in Russia, seeking partial cancellation of Ericsson’s trademarks

(National Registrations No. 205234 ,

207822 ,

253069 and

International Registration No. 1024858 )

for non-use in relation to Class 11 goods — “devices for heating, refrigerating and ventilating.”

LLC R-Climate asserted its legitimate interest as a leading distributor and importer of climate control equipment in Russia and the Commonwealth of Independent States (CIS). It argued that its application to register a similar mark («Ericsson») had been rejected by Rospatent due to Ericsson’s existing registrations.

Ericsson claimed that its marks were in use through telecommunications equipment incorporating cooling and ventilation components, such as base stations and climate-controlled cabinets. It also pointed to the presence of its marks in customs declarations, license agreements, and promotional materials. Additionally, Ericsson accused LLC R-Climate of engaging in bad faith litigation, referencing similar lawsuits filed in Kazakhstan and suggesting an intent to capitalize on Ericsson’s global reputation.

The Court’s View: Evidence and Territorial Limits

The IPC, acting as both the court of first instance and cassation in intellectual property matters, ruled in favor of R-Climate. On 23 October 2024, its Trial Chamber found that Ericsson had failed to demonstrate genuine use of the disputed marks in connection with Class 11 goods during the relevant three-year period. The court adopted a narrow evidentiary standard, holding that embedded cooling components in telecom equipment did not amount to standalone use for Class 11 goods. Customs declarations, license agreements, and marketing materials were also deemed insufficient due to their lack of specificity and territorial relevance. This position was later upheld by the Presidium of the IPC on 12 February 2025, reinforcing a formal and jurisdiction-specific approach to non-use cancellation claims.

The court also rejected Ericsson’s bad faith arguments. It concluded that LLC R-Climate’s actions did not constitute abuse under Article 10 of the Russian Civil Code or Article 10bis of the Paris Convention. The mere existence of parallel proceedings in Kazakhstan was not enough to prove dishonest intent, particularly since R-Climate had demonstrated active business operations and a legitimate interest in expanding its trademark portfolio.

Ericsson had also invoked the 2002 Chisinau Convention, asserting that Kazakhstani court findings — which upheld Ericsson’s trademarks and deemed LLC R-Climate’s actions abusive — should be recognized in Russia. However, the IPC declined to give preclusive effect to these judgments, noting that the cases involved different evidence and were decided under distinct legal systems. Similarly, the court dismissed arguments based on the Eurasian Economic Union (EAEU) Treaty, affirming that use of a trademark in Kazakhstan could not substitute for use in Russia.

Ericsson further contended that international sanctions had prevented the use of its marks in Russia. The court found this argument unpersuasive, concluding that Class 11 goods — as civilian products — were not subject to any specific import bans. Moreover, Ericsson failed to demonstrate any use even before such restrictions became relevant, weakening its reliance on force majeure.

Conclusion

This dispute illustrates how courts in different jurisdictions can reach opposite conclusions based on similar facts and legal claims. In Kazakhstan, LLC R-Climate’s actions were deemed abusive, while the Russian court focused strictly on whether Ericsson had proven actual use of the marks for relevant goods, without engaging substantively with claims of bad faith.

The Russian court also rejected Ericsson’s sanctions defense, finding no legal barrier to the import or sale of Class 11 goods. The decision reflects a formalist approach: in the absence of clear, jurisdiction-specific evidence of use, neither brand reputation nor external constraints may suffice to preserve trademark rights.

These contrasting outcomes underscore the complexities multinational companies face in managing global IP portfolios — particularly in the current context of the Ukraine–Russia conflict. At the same time, the case offers a valuable example of the types of evidence a Russian court may consider decisive in non-use cancellation proceedings.

More from our authors:

	Trade Mark Law in Europe: Case Law of the Court of Justice of the European Union, Fourth Edition by Ulrich Hildebrandt € 176
	Concise European Design Law by Verena von Bomhard and Alexander von Mühlendahl € 125

Alternative Dispute Resolution Process

The dispute began with a complaint filed before one of the DRS Providers. The complainant alleged that the domain name had been acquired in bad faith and created confusion with their registered trademark and requested its transfer. The DRS Provider panel evaluated the dispute under the Internet Domain Name Dispute Resolution Mechanism Communiqué (“Communiqué”) and the Internet Domain Name Regulation (“Regulation”), concluding that the following three criteria were met:

1. Similarity: The domain name was found confusingly similar to the complainant’s trademarks.
2. Lack of Legal Rights or Interests: It was determined that the domain owner has no legal rights or legitimate interest in the domain name.
3. Bad Faith: It was found that there had been a prior dealership and licensing relationship between the parties, and after this relationship ended, the domain name was registered in bad faith.

Accordingly, the panel ruled that the disputed domain name should be transferred to the complainant.

Judicial Process and the Significance of the Decision

The registrant of the domain name challenged the DRS Provider’s decision in court. The lawsuit was heard before the Çanakkale Civil Court of First Instance (“CCFI”), which upheld the DRS Provider’s decision and rejected the request for annulment. This case is significant as it marks the first known instance where a DRS Provider’s decision has been subject to judicial review under the new TRABIS system.

Additionally, this case has highlighted a legal gap concerning which court has jurisdiction and competence over such disputes. This gap creates difficulties for those seeking judicial review of DRS Providers’ decisions. Given that a preliminary injunction (“PI”) must be obtained within 10 business days to prevent the enforcement of a DRS Provider’s decision, this short timeframe, combined with the jurisdictional uncertainty, could lead to practical confusion and legal uncertainty, potentially resulting in violations and loss of rights.

However, considering that this dispute was brought before the CCFI and another recent DRS Provider’s decision was subject to a PI obtained from the Intellectual and Industrial Property Rights Court (“IP Court”) in Istanbul, it can be inferred that the competent courts are the IP Courts and, in locations where such a court does not exist, the CCFI. In both instances, the lawsuits were filed in the jurisdiction of the plaintiff’s domicile, suggesting that the competent court should be the IP Courts or the CCFI located in the plaintiff’s jurisdiction.

Notably, among the recommendations submitted to the Information and Communication Technologies Authority (“BTK”) by some DRS Providers, there is a proposal to amend the legislation to explicitly determine the competent and authorised court for such disputes.

Conclusion

The court’s approval of a DRS Provider’s decision in this domain name dispute is a milestone in testing the effectiveness of the legal framework governing domain name disputes under the TRABİS system. While the court upheld the DRS Provider’s decision, the case also exposed a significant shortcoming in the current system: the absence of a clear legal provision specifying the competent and authorised court for lawsuits against DRS Providers’ decisions.

This decision has drawn attention to the legal uncertainty in practice and demonstrated the need for legislative amendments as also emphasized by the proposals submitted to BTK.

Given that the court upheld a DRS Provider’s decision, this ruling serves as an important precedent for future similar disputes. It also establishes that DRS Providers’ decisions can successfully undergo judicial scrutiny.Türkiye

More from our authors:

	Trade Mark Law in Europe: Case Law of the Court of Justice of the European Union, Fourth Edition by Ulrich Hildebrandt € 176
	Concise European Design Law by Verena von Bomhard and Alexander von Mühlendahl € 125

An Eleventh Circuit Court of Appeals panel upheld a preliminary injunction barring the use of the “KRANK3D” mark, in a case brought by a company that holds the registered trademark “KRANK’D” (Hi-Tech Pharmaceuticals, Inc. v. Nutrition Resource Services, Inc., No. 24-10564 (11th Cir. Dec. 4, 2024)).

Case date: 04 December 2024
Case number: No. 24-10564
Court: United States Court of Appeals, Eleventh Circuit

A full summary of this case has been published on Kluwer IP Law

More from our authors:

	Trade Mark Law in Europe: Case Law of the Court of Justice of the European Union, Fourth Edition by Ulrich Hildebrandt € 176
	Concise European Design Law by Verena von Bomhard and Alexander von Mühlendahl € 125

EU publishes CP15 Common Practice

On 12 March 2025, the European Union Intellectual Property Network (EUIPN) published the CP15 Common Practice document which establishes principles for the comparison of goods and services and the interpretation of Canon criteria, with a three-month implementation period for member state intellectual property offices (MS IPOs).

Read the full article here

France set to implement CP15 Common Practice

The National Institute of Industrial Property (INPI) has announced that it will implement the European Union Intellectual Property Office’s (EUIPO’s) CP15 Common Practice on comparing products and services from 12 June 2025.

Read the full article here

Japan seeks input on trademark protections for national emblems

On 13 March 2025, the Japan Patent Office (JPO) announced a call for public opinions on draft notices regarding the protection of national emblems and international organization marks under the Trademark Act.

Read the full article here

Libya increases trademark renewal fees for foreign owners

On 27 November 2024 the Ministry of Economy and Commerce of Libya issued Ministerial Resolution No. 586 to increase trademark renewal fees for foreign owners to US$2,000 per year.

Read the full article here

Libya temporarily halts new trademark applications

With an aim to address the existing backlog and streamline the registration process, Libya’s trademark office announced a temporary suspension of new trademark applications from 5 March 2025 to 10 April 2025.

Read the full article here

Portugal warns of fraudulent payment requests for trademark fees

On 8 March 2025, the National Institute of Industrial Property (INPI) of Portugal alerted users about fraudulent requests for payment of fees being circulated under its name.

Read the full article here

Trademark data from Uganda now available on TMview

With effect from 10 March 2025, the Uganda Registration Services Bureau (URSB) integrated its trademark data into TMview, an online search tool that allows users to access the databases of all participating trademark offices.

Read the full article here

More from our authors:

	Trade Mark Law in Europe: Case Law of the Court of Justice of the European Union, Fourth Edition by Ulrich Hildebrandt € 176
	Concise European Design Law by Verena von Bomhard and Alexander von Mühlendahl € 125

This judgment by the GC  (available in German and French) concerns three EUTM applications, one for the word “AESKUCARE” and two figurative marks with “AESKUCARE” as their dominant element. The applications covered, among other goods/services, diagnostic products in class 5, medical instruments in class 10, laboratory services in class 42 and medical services in class 44.

The plaintiff, market leader in surgical instruments, filed oppositions based on two “AESCULAP” word mark registrations covering surgical instruments in class 10, one EUTM and one German registration (the latter dating from 1921). The plaintiff claimed that there was risk of confusion and that the applications took unfair advantage of the reputation of the older trademarks (Art. 8 V UTMR).

Opposition Division and Board of Appeal

The Opposition Division ruled in favour of the opponent regarding all goods and services (5, 10, 42, 44) on the basis of Art. 8 V UTMR. The Board of Appeal rejected the opposition in respect of classes 5, 42 and 44. The BoA found that the reputation of the AESCULAP mark was not strong enough for the public to make a link between surgical instruments on the one hand and test kits, laboratory services and medical services on the other hand. The BoA considered AESCULAP inherently weak because it is the name of the Greek god of medicine. With regard to classes 5, 12 and 44, AESCULAP was therefore not a mark but the god of medicine for the targeted public (doctors and laboratory personnel).

Judgment

The GC lifted the decisions by the BoA and reinstated the decision of the Opposition Division. The BoA had wrongfully rejected the opposition regarding classes 5, 42 and 44. The judgment touches on interesting questions about Art. 8 V UTMR:

One of these questions is whether the inherent weakness of an older mark argues against a mental link between marks, even if the older mark has acquired high distinctiveness and reputation through use. The General Court clarified that this was not the case. Where a mark had acquired particular distinctiveness through its reputation, the argument that the mark was inherently weak was irrelevant for whether there was a link between the marks at issue (see para. 71; see also T-629/16 para 135). Since the GC found that the mark AESCULAP had acquired sufficient distinctiveness and reputation through use, the court didn’t need to assess whether the mark was inherently weak for goods/services related to medicine.

The judgment is also about whether the value of market surveys diminishes over time. The opponent had relied on a market survey of 2010. In 2013, the BoA relied on that survey in another opposition decision concerning AESCULAP and concluded that the reputation of the mark was high. In its decisions mentioned above, however, the BoA found that because of the 7 years that had passed after the survey of 2010, the survey said less about the current situation and concluded that AESCULAP had average reputation only. The GC disagreed. It found that the BoA had disregarded facts submitted by the opponent that suggested that their market position was at least as strong as in 2010. Therefore, the GC did not see sufficient justification for deviating from the assessment of reputation made in 2013.

More from our authors:

	Trade Mark Law in Europe: Case Law of the Court of Justice of the European Union, Fourth Edition by Ulrich Hildebrandt € 176
	Concise European Design Law by Verena von Bomhard and Alexander von Mühlendahl € 125

The U.S. Court of Appeals for the Second Circuit has affirmed a district court judgment that held the strength-of-mark factor strongly favored PepsiCo, Inc. in a trademark infringement lawsuit brought by RISE canned coffee drink maker RiseandShine Corporation over PepsoCo’s use of the mark MTN DEW RISE ENERGY. The panel said that the district court properly analyzed the strength-of-mark factor as a question of law and did not disregard material facts regarding the mark’s acquired strength. Further, the appeals court said that the district court properly treated the likelihood of confusion question as a matter of law, despite some earlier circuit rulings to the contrary (RiseandShine Corp. v. Pepsico, Inc., No. 23-1176-cv (2d Cir. Dec. 19, 2024)).

Case date: 19 December 2024
Case number: No. 23-1176-cv
Court: United States Court of Appeals, Second Circuit

A full summary of this case has been published on Kluwer IP Law

More from our authors:

	Trade Mark Law in Europe: Case Law of the Court of Justice of the European Union, Fourth Edition by Ulrich Hildebrandt € 176
	Concise European Design Law by Verena von Bomhard and Alexander von Mühlendahl € 125

The U.S. Court of Appeals for the Fifth Circuit upheld the district court’s denial of a preliminary injunction against property management company Rampart/Wurth Holding filed by Rampart Resources, a land and real estate services company. The appellate court concluded that the lower court did not err in concluding that Rampart Resources did not prove a likelihood of success in its suit alleging that Rampart/Wurth infringed on its federally registered trademark. In so holding, the appellate court held that the district court did not err in its conclusion that the eight “digits of confusion” did not support a finding that there existed a substantial likelihood of confusion between the senior trademark of Rampart Resources and the mark of Rampart/Wurth (Rampart Resources, Inc. v. Rampart/Wurth Holding, Inc., No. 24-30111 (5th Cir. Feb. 24, 2025)).

Case date:24 February 2025
Case number: No. 24-30111
Court: United States Court of Appeals, Fifth Circuit

A full summary of this case has been published on Kluwer IP Law

More from our authors:

	Trade Mark Law in Europe: Case Law of the Court of Justice of the European Union, Fourth Edition by Ulrich Hildebrandt € 176
	Concise European Design Law by Verena von Bomhard and Alexander von Mühlendahl € 125