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Sep 19, 2019
Giulia Beneduci, De Berti Jacchia Franchini Forlani, Italy
First published at

CJEU provides clarifications on jurisdiction for on-lin...

Giulia Beneduci, De Berti Jacchia Franchini Forlani, Italy , First published at www.lexology.comOn September 5, 2019, the Court of Justice of the European Union handed down a significant judgement on a request for a preliminary ruling concerning jurisdiction over EU trademark infringement performed electronically (CJEU, 05.09.2019, C-172/18, AMS Neve et al. vs. Heritage Audio et al.). In essence, the CJEU was asked to clarify whether the owner of an EU trademark alleging that its rights were infringed by a third party through advertising and offers for sale displayed electronically, could bring an action against such third party  read more

Sep 05, 2019
Lim Eng Leong, Henry Goh & Co. Sdn Bhd, Malaysia
First published at

A Change Would Do Us Good

Lim Eng Leong, Henry Goh & Co. Sdn Bhd, Malaysia, First published at www.henrygoh.comAfter close to a decade of intermittent discussions, proposals, referendums and making up for lost time between the powers-that-be and stakeholders, the new Trademarks Bill (and soon to be Act) of 2019 finally see the light of day. This would mark (pun intended) an ambitious and complete overhaul of the aging Trade Marks Act 1976. The new Bill was tabled in the Malaysian Parliament on 11 April 2019 and was approved (with some amendments) by the Lower House (Dewan Rakyat) on 02 July 2019 and the Upper House (Dewan Negara) on 23 July. Pending royal assent, it is now almost as  read more

Aug 22, 2019
Sarah Musgrave, Charles Russell Speechlys LLP, United Kingdom
First published at

Motion Marks: The new moving trade marks and guidance f...

Sarah Musgrave, Charles Russell Speechlys LLP, United Kingdom, First published at www.charlesrussellspeechlys.comThe UK Intellectual Property Office (UK IPO) has recently granted the first multimedia moving trade mark following a change in the requirements for non-traditional trade mark applications under the 2015 Trade Marks Directive. The mark was granted to Toshiba and consists of a one second clip of the Toshiba logo surrounded by Origami-style folding coloured triangles. The granting of the mark follows the elimination of the requirement for trade marks to be represented graphically. Instead, intellectual property owners can now use  read more

Aug 07, 2019
Jonathan Tonna and Antoine Camilleri, Mamo TCV, Malta
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New Maltese Opposition Procedure

Jonathan Tonna and Antoine Camilleri, Mamo TCV, MaltaIn December 2018 the Maltese Industrial Property Registrations Directorate (IPRD) transitioned from a long-standing system of ex officio examinations of new trademark applications for potential conflict with pre-existing marks to an opposition system, as required by Directive (EU) 2015/2436 approximating the laws of EU Member States relating to trademarks.
Under the ex officio procedure, the IPRD would run its own searches in the Maltese and EU trademark registers and raise objections to new applications whenever potential conflict with existing marks was identified. Applicants would then be given the opportunity to make their case before the IPRD if and when an objection was raised.
This system was scrapped shortly after the issuing of Legal Notice 343 of 2018 (“The Trademark Search and Opposition Rules”), whereby the new opposition procedure was introduced. The said law was issued by the Ministry for the Economy, Investment and Small Businesses in the run-up to the promulgation of Malta’s new Trademarks Act (Chapter 597 of the
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Aug 06, 2019
Axel Anderl and Alexandra Ciarnau, DORDA Rechtsanwälte GmbH, Austria
First published at

"BLACK FRIDAY" - Now Freely Usable for Promotions in Au...

Axel Anderl and Alexandra Ciarnau, DORDA Rechtsanwälte GmbH, Austria, First published at www.lexology.comBlack Friday is unquestionable one of the most profitable and busiest days of the year for the retail industry, particularly online. Worldwide almost all online stores offer sales or other promotions on Black Friday or Cyber Monday. However, after this practice has been established online, a trademark for "BLACK FRIDAY" was registered in Germany back in 2013.
In 2016, a Chinese company acquired the trademark and then filed for its extension to Austria in 2017. Based on the registered trademark, it granted exclusive rights to an Austrian company, which licensed usage rights to various partner stores against remuneration.
Further, an exclusive "Black Friday-Cooperation Program" was established. Non-partners who used the event name or trademark were prosecuted and requested to either pay a license fee or refrain from running Black Friday promotions. Some followed the request and entered into license agreements. Eventually some, however, did challenge the validity of the
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Aug 05, 2019
Marietta Flores, OMC Abogados & Consultores, Peru

The Three-dimensional Marks, why is it difficult for th...

Marietta Flores, OMC Abogados & Consultores, PeruThe three-dimensional marks are a type of marks, little known, used and applied for registration by companies in our country. They are perhaps not very requested not only in Peru but also in other countries, because in order to get to access the registry they need to go through several filters before succeeding, and this makes businessmen have no incentive to apply for this type of signs. As the name implies, three-dimensional marks are three-dimensional forms of the products, their packaging or wrappings that are distinguished from those of  read more

Jul 11, 2019
Simon Casinader, Senior Associate, K&L Gates LLP, United Kingdom
First published at

Three stripes and you’re out!” – The EU General Court r...

Simon Casinader, Senior Associate, K&L Gates LLP, United Kingdom, First published at www.iplawwatch.comOn 19 June 2019, the EU General decided a case about the validity of Adidas’ EU trade mark registration for three stripes. In the General Court’s decision, the Court upheld the invalidity of the mark on the basis that: (i) the mark wasn’t used consistently and evidence of reversed/amended versions of the mark was inadmissible; and (ii) Adidas failed to show acquired distinctiveness across the EU, providing admissible evidence for only five EU Member States. In 2013, Adidas applied for EU Trade Mark 12442166 with the  read more

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