We are delighted to be co-sponsoring the Chicago IPO Annual Meeting again, 23-25 September this year. The Intellectual Property Owners Association invites participants to renew acquaintances and make new friends during this event which offers a mix of educational programs, committee meetings, networking opportunities, and exhibits. On 24 September, IP Partner, Dr. Andreas Renck will
With the momentum building in the trend towards connected and autonomously driven vehicles, automotive companies should review their trademark portfolios to ensure that their key marks are covered for goods and services in this space. Dr. Andreas Renck, Alicante Office Managing Partner at Hogan Lovells, sees the established practice of classification of goods and services
Verisign, Inc. v. XYZ.COM, LLC, No. 17-1704, WL 2018 WL 2407644 (4th Cir. May 29, 2018) In this recent decision, the Fourth Circuit Court of Appeals clarified the requisite showing for obtaining an award of attorney fees under the Lanham Act. Reversing a decision out of the Eastern District of Virginia, the Fourth Circuit held
The Mexican Senate approved a package of reforms to the provisions of the “Ley de la Propiedad Industrial” (IP Law) comprising important changes to the protection of trademarks in Mexico. These reforms can be considered as the most important reforms to the IP Law in recent years. The reform includes extensive changes. We would like
(Case analysis: T-687/16 – Koton Mağazacilik Tekstil Sanayi ve Ticaret AŞ v EUIPO / Joaquín Nadal Esteban) Successfully proving bad faith in a cancellation action can be a challenge. An additional hurdle can arise if the mark allegedly applied for in bad faith covers dissimilar goods or services. The General Court (GC) confirmed that bad faith must
General Court (GC) judgment in case T-736/15, 19 October Re-filings – legitimate interest versus bad faith Trademark re-filings can have a legitimate interest which could be to slightly amend the specification of goods and/or services of its previous rights or to modernise its trademarks (e.g. slightly changing the stylisation of its figurative trademark) – see
The Beijing Haidian District People’s Court has recently heard a case in which a domain name registrant requested the court to declare its domain name registration contracts invalid. In this somewhat unusual case, the court granted this request concluding that the object of the agreement was cyber-squatting, thereby cancelling dozens of squatted domain names. The
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a panel denied the transfer of a domain name mainly based on the lack of evidence about the Respondent’s bad faith upon registration of the domain name in dispute. The Complainant was Zeca S.p.A of
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel ordered the transfer of a domain name because, although it had never been used for an active website, it had been used to send fraudulent emails in an attempted cyber fraud. The Complainant
China Business Law Journal has recently announced its ‘Deals of the Year 2016’ recognizing cases that saw the most sophisticated efforts by legal counsel. And as a result our work for Tencent has been recognized as one of the Top 10 Dispute Deals of the Year and the only domain name case on the list.
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a cognac producer successfully obtained the transfer of 10 domain names reproducing its brand under the .TOP and .VIP new generic Top Level Domains (gTLDs). The .TOP gTLD is one of the many gTLDs recently
On 23 June 2016, the Guangdong Higher People’s Court handed down its long-awaited judgment in the New Balance/新百伦-case. In its judgment, the Court upheld the finding of trademark infringement by New Balance, but reduced the damages granted in first instance from RMB 98 million by nearly twenty-fold, to ‘only’ RMB 5 million (approximately USD 750,000).
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a three-member Panel refused to order the transfer of a domain name that exactly matched the Complainant’s trade mark because the Complainant failed to prove bad faith registration and use, given the domain name’s plausible
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a panel denied the transfer of a domain name that was acquired by a domain name trader on the basis that there was no evidence of bad faith registration. The Complainant was Robin Food B.V.,
China’s Supreme People’s Court (“SPC“) handed down its final judgment in the controversial Castel case. This judgment was long-awaited, as it provides the first SPC response to what can be called a ‘new generation’ of worrying trademark squatting cases. In the case at hand, the SPC seems to step up its efforts to fence in
The dismissal of a complaint brought under the Domain Name Dispute Resolution Policy for .hk domain names (“DNDRP”) highlighted the importance of adducing sufficient evidence to back up assertions of bad faith. This is especially so when the disputed domain name was registered before the complainant had acquired rights in the relevant trade mark. In
In a recent domain name dispute brought under the Uniform Rapid Suspension System (URS) before the National Arbitration Forum (NAF), a panel ordered the suspension of a domain name under the .ONLINE new generic Top Level Domain (gTLD) following the registrant’s filing of a response after a Default Determination ordering the suspension of the domain
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the National Arbitration Forum (NAF), a panel ordered the transfer of a domain name although registration of the domain name predated filing of the trade mark application. The Complainant was Party Bus MN, LLC., a company that provided transportation services for
Qatar Airways once again fails to discover Qatar Qatar Airways Q.C.S.C. of Doha, Qatar, lost a case in July brought under the Uniform Domain Name Dispute Resolution Policy (UDRP) and failed to recuperate the domain name <discoverqatar.com>.
In a recent case under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied a domain name transfer on the basis that a single instance of a sale was sufficient to show that the domain name was used in connection with a bona fide offering of
(Judgment of 8 May 2014 in Case T-327/12, Simca Europe Ltd. v. OHIM / GIE PSA Peugeot Citroën (SIMCA)) The General Court confirms that applying to register a once famous and now unused trademark can amount to bad faith where the unused earlier mark has residual goodwill/surviving reputation. In 2007, Mr Joachim Wöhler applied to