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On March 8 2018, the European Court of Justice decided on the preliminary questions posed by the Oberlandesgericht in Düsseldorf regarding the appearance of a design determined by technical function ((C-395/16) DOCERAM v CeramTec).

In the case, Crocs Inc USA v Liberty Shoes Limited [CS (COMM) No 772/2016 and connected cases], Crocs (the plaintiff) held design registrations (Nos 197685 and 197686) under the Design Act 2000 (the Act), for its perforated and non-perforated clog-type slipper/shoes. From 2014 to 2018, Crocs filed several suits for infringement of its registered designs, seeking a permanent injunction against the defendants, restraining them from infringing the design of Crocs footwear.

Does a trade mark owner have to be physically present in the Philippines to show genuine use of a mark? In the case of W Land Holdings Inc v Starwood Hotels and Resorts Worldwide Inc (G.R. No. 222366, December 4 2017), the Supreme Court (SC) ruled in favour of Starwood, asserting that it makes actual use of its W mark in the Philippines. This case arose from a cancellation action filed with the Intellectual Property Office of the Philippines (IPOPHL).

Louis Vuitton Malletier, the owner of the LV registered trade mark, recently filed a civil lawsuit with the IP Court against a second-hand luxury goods vendor, accusing the vendor of selling LV branded counterfeits online. In November 2017, the IP Court issued a judgment. The defendant was found guilty of trade mark infringement while Louis Vuitton was awarded compensatory damages.

The USPTO unveiled the long-awaited redesigned patent cover at the South by Southwest festival in Austin in March. It will replace the patent cover that has been in service for more than 30 years when the 10 millionth patent is granted, which is expected to happen this summer.

In the case In re El Galan, Inc, the Trademark Trial and Appeal Board (TTAB) held that there was a likelihood of confusion between marks covering cigars and tequila, finding that such products are related and complementary. Although this case is not precedential, it provides guidance to parties attempting to ascertain whether a mark will be available for registration and exploring arguments available to assist in overcoming likelihood of confusion refusals made by a Patent and Trademark Office (PTO) examiner.

On March 9 2018, Cambodia officially deposited its instrument of accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications, becoming the first nation to join the Geneva Act.

Recently, many disputes regarding store appearances have occurred relating to businesses, such as sushi or ramen stores. Unlike the US where the trade dress theory exists, rules for protecting store appearance in Japan are not set and no case law has ever granted an injunction. This is the first case granting an injunction in a store appearance case.

Generally trade mark use does not raise questions. The law (Article 1484) simply states that the trade mark may be used on goods, in documents, in advertisements and other material. When the issue of non-use is examined by courts, these provisions of the law are compared with what happens on the market. For the purpose of proper use, the law (Article 1486) also states that a trade mark may be used by the trade mark owner himself as well as by other people under the control of the trade mark owner. Control should be understood broadly. This is not only a licence but any transaction or chain of transactions where the trade mark owner is aware of the use by other people and may intervene if necessary. This is a relationship pattern that has been adjusted by judicial practice and proved in many cases.

Unlike many countries, Turkish trade mark law has had a rule since 1995 that a senior trade mark registration or application identical or indistinguishably similar to a junior trade mark application can be raised as an absolute ground for refusal if the goods/services are also identical or of the same type. The Turkish Industrial Property Code (the IP Code), which entered into force on January 10 2017, softened this rule, and in cases where an applicant submits a notarised document to the Trademark Office indicating that the owner of the prior registration agrees to the registration of the trade mark application that is identical or indistinguishably similar to a senior trade mark or trade mark application, then the junior application cannot be rejected on this ground.