Trademarks & Domain Names

The sessions scheduled at INTA's 2023 Annual Meeting remind us that trademarks are not the only rights to consider when looking at brand protection.

Artist Mason Rothschild has been ordered to pay Maison Hermès International US$133,000, after a New York jury rejected his defence of freedom of expression to find instead that his ‘MetaBirkin’ NFT infringed the fashion house’s trademark rights.

Air France KLM has successfully brought EU trademark opposition proceedings on the grounds of likelihood of confusion for the trademark ‘Flying Blue’ and the domain name flyingblue.com, as used for the airline's frequent flyer programme. Frouke Hekker outlines the EUIPO ruling and explains how likelihood of confusion is assessed.

Non-traditional trademarks, such as those protecting shapes, smells and sounds, are becoming an increasingly popular way for companies to distinguish their products and services. Savvy Kaushal explains how to register a sound mark in the EU.

A single letter can be registered as a trademark, provided that it is distinctive in relation to the goods and services to which it applies. But enforcing short signs, such as single letter trademarks, is another challenge.

The 2022 Review of Notorious Counterfeiting and Piracy Markets by the Office of the US Trade Representative (USTR) has assessed the volume of online marketplace counterfeiting and ranked sites by worst offender.

You may already have started to consider how best to protect your IP rights in new digital worlds and on blockchain technologies. But did you know that the emergence of NFTs, the blockchain, metaverses and Web 3.0 also has implications for your domain name strategy? In our latest factsheet, we discuss NFT domains and offer strategies for success.

The international systems for trademark and design protection continue to expand with Brazil the latest country to file an instrument of accession to the design protection system and Mauritius acceding the trademark system. The more countries that join the systems the better for companies that operate internationally.

In December 2022, the EU General Court discussed the assessment of the likelihood of confusion in the context of the dispute between the holders of the ‘Well and Well’ and ‘WellBe Pharmaceuticals’ trademarks. Florence Chapin sets out its conclusions

Most IP legislation was designed to support trademark protection in physical markets, making its application a challenge for brand owners facing trademark infringement on ecommerce channels, such as online marketplaces. Megan Taylor discusses strategies for brand protection online in light of recent rulings by the EU and UK courts.

In its December 2022 preliminary ruling, the Court of Justice of the EU found that Amazon’s practice of displaying ads for counterfeit Christian Louboutin shoes makes the e-tailer liable for online trademark infringement.

The Madrid System for the international registration of trademarks allows brand owners to apply and maintain protection in the different member states of the system via one single procedure, in one language and one set of fees. However, levels of protection can vary and the process is not without its shortfalls.