OHIM has updated its practice on trade mark class headings after a
ruling from the Court of Justice of the EU in the IP Translator case.
The new rules came into force on June 21 and require Community trade
mark applicants who use the general indications of a class heading to
indicate expressly whether they intend to cover all goods and services
in that class, or only some of them.
According to a new Communication of the President, applicants can
still use the general indications of the Nice class headings to identify
the goods and services they want covered, provided they are
sufficiently clear and precise.
But the Office will only accept these general indications "on a case-by-case basis".
For CTMs registered under the previous regime dating from 2003, the
Office considers that applicants listing all the general indications
intended to cover all the goods or services in the alphabetical list in
For applications filed before the entry into force of the new rules,
the same applies – unless the applicant specified that they had sought
protection for only some goods or services.
The CTM Register will in future reflect whether or not all goods and services in the alphabetical list are covered.
WIPO hopeful of more IP deals. WIPO director-general Francis Gurry said he was hopeful of a deal being reached in September on a proposal to harmonise the rules for filing designs around the world after member states agreed a new treaty on protecting the rights of performers at a diplomatic conference in Beijing in June. “It builds confidence in our capacity to agree,” he said.
Apple hit with new IP lawsuit in China. Apple is defending itself against a new trade mark complaint after settling with Proview over the iPad mark in China for $60 million. Jiangsu Xuebao Daily Chemical Company has alleged that Apple’s Snow Leopard operating system software violates its trade marks. The company states that it has registered the Chinese characters for snow leopard in 42 classes starting in 1994, including computer products.
A lesson in heuristics Brand owners. who want to understand how shopping habits are affected by look-alike products have been given more research tools in a study by the British Brands Group. One part of the report examines the role of heuristics (mental shortcuts) in decision making. Author Alex Carter-Silk said: “Advances in behavioural science allow us to assess empirically whether a competing, similarly packaged product is unfairly free riding.”
Clarity sought over genuine use. An opinion from the advocate general of the Court of Justice of the EU has inflamed the debate about what constitutes genuine use of a Community trade mark. In the opinion in the Onel case, Eleanor Sharpston said that use in a single EU member state “is not, of itself, necessarily sufficient to constitute genuine use of that trade mark”. But she added that it might be possible “when account is taken of all the relevant facts”.
A New York court has dismissed Louis Vuitton's allegations in a
suit against Warner Bros that viewers would believe a knockoff bag
featured in the film The Hangover Part II was an authentic one.
India's Intellectual Property Appellate Board has cancelled the
Financial Times trade marks registered by both the British newspaper and
Indian company Times Publishing House Limited in the latest stage in a
19-year old dispute between the two companies.
A French court rejected a claim for trade mark infringement from
Christian Louboutin against Zara over the clothing chain's sale of a
shoe with a red sole.
The Hong Kong Council on Smoking and Health, a government agency,
is advocating the implementation of a tobacco plain packaging law.
Australia passed a similar law last year.
Two senior USPTO officials, Nancy Kremers and Conrad Wong, are to leave their posts in China.
The Court of Appeal in London ruled in favour of Czech brewery
Budejovický Budvar in a battle with rival Anheuser-Busch over the rights
to the Budweiser name in the UK, saying that both companies could
register the mark.