When a trademark achieves a reputation, its owner can claim a broader protection which extends to goods and services not designated by their trademark registrations. However, such trademarks are more likely to be the target of parasitism and unauthorised use by unscrupulous infringers. A recent judgment regarding infringement of the well-known trademark PETRUS reaffirmed that trademark counterfeiting damages the prestige and reputation of the affected trademark.
In 2020 the China Intellectual Property Administration dismissed an opposition proceeding against the geographical indication (GI) collective trademarks COGNAC and 干邑 ('Cognac' in Chinese), which were filed by the National Interprofessional Cognac Bureau. Both trademarks have since proceeded to registration. Because GI trademarks are not immune to genericide attacks, owners must monitor how they are used.
In a recent case, the Supreme Administrative Court held that there was a likelihood of confusion between an earlier figurative mark, PUMA, and the contested trademark RUMA. The Finnish Patent and Registration Office and the Market Court had previously reached a contrary conclusion. Although the owner of the PUMA trademarks had presented no evidence for the reputation of the marks in Finland, the court considered them to have a strong distinctive character and scope of protection.
The use of logos and denominations has changed over time since more competitors now exist. Therefore, greater creativity is required to avoid the use of denominations or logos which are similar to previously registered or requested trademarks. Further, parties should take into account that consumer preference has also changed due to the influence of various factors. This article considers three types of brand – namely, white brands, luxury brands and premium brands.
The IP High Court recently confirmed the Japan Patent Office (JPO) Trial and Appeal Board's decision to dismiss Starbucks Corporation's request to invalidate a trademark which had a similar composition to that of its own. To prove that the composition of its trademark was well known and characteristic, Starbucks conducted a survey through a research company using an image that had undergone mosaic processing. However, the JPO and the IP High Court found that the survey was inappropriate.