Legislation & Practice
Singapore
IPOS Expedite Track for trade mark proceedings
The Intellectual Property Office of Singapore (IPOS) has introduced an Expedited Track for trade mark proceedings, allowing certain cases to progress more swiftly. This pilot programme is initially available for up to eight cases in 2025, with potential expansion in 2026 based on demand.
Key features of the Expedited Track include shorter deadlines (eg. 2 months for evidence as opposed to the usual 2-5 months), limits on the length of evidence and submissions, and a default determination on the papers without a hearing. Both parties must agree to opt for this track, and requests can be made at various stages of proceedings.
Conditions for the Expedited Track require adherence to deadlines and page limits. Failure to meet these conditions may result in the case handled as a standard proceeding.
See here.
Hong Kong
Moral Boundaries in Trade Mark Registration: Insights from Hong Kong's Latest Guidelines
The Hong Kong Trade Marks Registry has recently updated its Work Manual on "Absolute Grounds for Refusal", specifically addressing sections 11(4)(a), (b), and 11(5)(a) of the Trade Marks Ordinance. These updates provide clearer guidelines for refusing trade marks based on considerations of morality, deception, and legal prohibitions.
Section 11(4)(a) - Marks Contrary to Accepted Principles of Morality: This section targets marks that violate moral principles, not political correctness. Refusals apply to marks that:
Threaten national security, sovereignty, or public safety by inciting or trivializing illegal activities.
Convey offensive or degrading messages towards specific races, groups, genders, religions, institutions, or beliefs.
Imitate government symbols or names without authorization.
Reference tragic or disturbing events in a way that could offend the public through commercialization.
Such marks are likely to be refused regardless of the goods or services applied for. The clarification provided by the Registry underscores its emphasis on moral principles and the potential for a mark to provoke outrage or censure.
In other jurisdictions, such as the EU, a mark considered contrary to accepted principles of morality - like the widely discussed case of "Covidiot", which term used to describe individuals disregarding COVID-19 safety measures - was denied on the grounds of morality during the global pandemic. This decision highlights the importance of societal considerations in trade mark registrations. Similarly, in China, trade marks are refused if they contravene socialist morality or adversely affect public order. This includes marks that may be deemed politically sensitive or contrary to the values upheld by the state. China's approach prioritises maintaining social harmony and aligning with socialist principles, leading to the refusal of marks deemed politically or morally inappropriate.
It is evident that each jurisdiction has its own criteria for assessing trade marks against principles of morality, reflecting cultural and political values. The differences between jurisdictions illustrate how trade mark registration is influenced by broader societal norms, extending beyond legal issues of distinctiveness.
For further details, please refer to the full document available on the Hong Kong Intellectual Property Department's website IPD Work Manual on Absolute Grounds for Refusal.
See here.
Case law
China
Beijing High Court Ruling on Bentley Motors Trade mark Dispute
In February 2025, the Beijing High Court ruled in favour of Bentley Motors Limited in a trade mark dispute against the China National Intellectual Property Administration (CNIPA) and Heshan Bentley Trading Co., Ltd (Heshan Bentley). The dispute centred on the invalidation of the "宾利 BENTLEY" trade mark, registered for footwear in 1997 by Heshan Bentley. Substantive issues were governed by the 1993 Trade mark Law due to the registration date of the mark.
Bentley Motors contended that the trade mark was acquired through "improper means," as defined by Article 27 of the 1993 Trade mark Law. This refers to methods that disrupt the order of trade mark registration, harm public interests, improperly occupy public resources, or seek undue benefits in ways other than deception. The CNIPA and the first-instance court concluded that Bentley Motors lacked sufficient evidence to prove that the disputed trade mark application involved any of these improper means. Consequently, the first-instance court upheld the CNIPA's decision to maintain the registration of the disputed trade mark.
Bentley Motors appealed the case to the Beijing High Court, which overturned the first-instance judgment and the CNIPA's decision. The High Court recognised the established fame and influence of the "BENTLEY" and "宾利" (the Chinese characters for "BENTLEY") trade marks in the automotive sector within mainland China. It noted the registrant's bad faith, evidenced by the fact that the disputed trade mark was initially registered by Fuhao Footwear and later transferred to Bentley Trading. Evidence showed direct shareholding or personnel cross-shareholding among these companies. Furthermore, the companies involved had applied to register over 20 trade marks in various classes, including 9, 14, 25, and 36, which are identical or similar to Bentley Motors' "Bentley," "BENTLEY," "B," and logo trade marks. They also applied for over 10 trade marks similar to other well-known commercial signs, such as "Ferrerias," without justification. The High Court concluded that these actions suggest unfair competition and exploitation of well-known brands, harming other businesses' rights and disrupting the trade mark registration order.
The High Court applied flexible criteria to evaluate Bentley's prior reputation. Although there was limited evidence of Bentley's reputation in China before 1997, the court recognised Bentley Motors' reputation in the automotive sector and confirmed the registrant's bad faith actions that could harm public interests. This ruling underscores a firm stance against bad faith trade mark registrations, even those obtained over twenty years ago.
See here Chinese version and here English version.
Germany
Infringement of Adidas' "Three-Stripe" Trade mark on Sports Trousers
The three stripes are Adidas' signature trade mark. But what if competitors like Nike also use the stripes on their sports apparel? In the case of the so called "LA Lakers Courtside Pants", the Higher Regional Court's tricky demarcation led to a defeat for Nike.
The sportswear manufacturer Nike is no longer allowed to offer a certain pair of sports trousers in Germany due to their similarity to the three-stripe design of its competitor Adidas. For four other pairs of pants, whose stripe design Adidas had also challenged, the court dismissed the trade mark infringement claim. For these trousers, the Higher Regional Court of Düsseldorf - unlike the Regional Court - saw sufficient differences to the Adidas design. "Not every side stripe pattern on sports pants should be prohibited", the court said.
In the case of the sports trousers now banned in Germany, according to the court, Adidas' trade mark rights have been violated. The three stripes on the trousers are so similar to Adidas' three-stripe logo that the target groups would perceive them not only as a decorative element, but as a product identifier. The Nike "Swoosh" logo on the shorts does not change this, as it is not perceived as significant due to its colour scheme and size.
The four other pants in dispute, on the other hand, did not resemble the Adidas trade mark enough or had Nike's brand logos so clearly visible that the court ruled out any confusion. As early as 2019, the European Court had ruled that Adidas' three stripes are not protected in every form and design.
The Higher Regional Court has described its decision as an individual case ruling. Nevertheless, the decision is likely to be not only comprehensible but also significant for similar constellations. In particular, the fact that the Higher Regional Court did not focus solely on the stripes, but rather on the overall picture, which is decisive for the consumer, is convincing.
Higher Regional Court of Düsseldorf, decision of 28 May 2024 - docket no. 20 U 120/23
See here.
Italy
Diesel v Calvin Klein Decision
The Italian Supreme Court recently ruled on an interesting case involving two major fashion companies. The case concerns the Diesel's stripe, a rectangular strip of fabric placed diagonally across the upper edge of the fifth pocket of their jeans.
The Supreme Court first of all confirmed the decisions made by the Milan Court and Court of Appeal, where they stated that the Diesel stripe is a distinctive sign with an inherent distinctiveness. In doing so, the Court rejected Calvin Klein's argument that the stripe should be assimilated to a shape element that cannot be registered as a trade mark because it is merely decorative, utilitarian and in any case standard. The Supreme Court also recalled that the lower Courts had qualified the Diesel stripe as a positioning trade mark. However, this qualification did not have an impact on the Supreme Court's decision.
Then, when assessing the likelihood of confusion between the Diesel stripe and the one adopted by Calvin Klein, the Court ruled against it, deeming correct the assessment made by the lower Courts according to which the element with the greatest visual impact in the Diesel stripe was its diagonal orientation, an element absent in the Calvin Klein stripe. In this regard, the Court reiterated that the assessment of likelihood of confusion 'must be conducted with regard to all the salient graphic and visual elements, by means of an assessment of impression, which disregards the possibility of a careful comparative examination and which must be based on the normal diligence and prudence of the public that consumes that kind of product'.
Interestingly, in the decision of the Court of Appeal, confirmed by the Supreme Court, significant weight was given to the fact that 'the jeans of the fashion houses are sold either in dedicated shops, or in well-defined and signposted areas of department stores, and always in the presence of sales staff, which made it impossible for the consumer to be confused'. From this perspective it becomes increasingly difficult for fashion houses to obtain protection of their trade marks within the limits of the likelihood of confusion. Of course, it is still possible to obtain protection by asserting the reputation of the trade marks in question. In this regard, it should be noted that in the Diesel v. Calvin Klein case, the reputation of the stripe was also asserted, but this was excluded by the Court of Appeal. The Supreme Court did not deal with this aspect as it related to an assessment of facts which, according to the Italian code of procedure, cannot be re-made by the same Supreme Court.
See here.
UK
Thatchers v Aldi (UK Court of Appeal)
Thatchers' Mark Aldi Product
In January 2025, the UK Court of Appeal issued an important decision in which it found that Aldi (the well-known discounter) had infringed Thatchers' UK registered trade mark, based on s. 10(3) of the Trade Marks Act (unfair advantage). This decision overturned the first instance's court's finding of no infringement. The original non-infringement decision had been reached because: (i) the similarities in appearance related to the use of lemons for lemon cider (which was commonplace and not distinctive), and overall, there were sufficient differences between the products such that the similarity was low; (ii) whilst Aldi's product had been "benchmarked" against the Thatchers cider, Aldi said they had not intended to confuse consumers; and (iii) the sales figures did not show significant objective economic advantage had been obtained by Aldi's use of the similar branding.
The Court of Appeal disagreed. They ruled that Aldi had intended to remind consumers of the Thatcher's product, and to convey that their product was similar (but cheaper). This was a subjective intention to take unfair advantage of Thatcher's mark. Aldi's activities resulted in a "transfer of image" of the Thatcher's brand to Aldi, which was an objective (unfair) advantage. This case is an important win for brand owners in the UK courts. It should also serve as a reminder of the value to brand owners of securing trade mark registrations for product appearance and packaging - Thatchers would not have won the case based on the law of passing off.
In March 2025, Aldi applied to the Supreme Court for permission to appeal (again) but to no avail. Aldi’s request was this week rejected by the UK’s highest court, marking the end of the road for the discount supermarket chain, to the relief of brand owners.
See here.
France
TJ Paris, 7 February 2025, No. 22-09210
The Paris First Instance Court has issued a ruling affirming Hermès' intellectual property rights concerning the well-known KELLY and BIRKIN bags. The case concerned very similarly shaped handbags produced in paisley print instead of leather, sold under the name Paisley-Jane, and the infringer's use of NFT's to promote them.
Following the principles on copyright protection set by the CJEU in Cofemel (C-683/17), the Court acknowledged that the specific forms which gave each bag its own individual silhouette, combined with their functional features, such as the closure systems, were eligible for copyright protection, even for utilitarian items like handbags. The court rejected claims that these features are commonplace or purely functional, reinforcing the protection of fashion creations beyond mere aesthetics. When evaluating counterfeiting, the court emphasised the importance of assessing similarities with the original work rather focusing on the differences, enabling action against copies that preserve key elements despite superficial alterations. The use of paisley fabric was deemed irrelevant, given that essential characteristics of the bags were reproduced.
The Court also confirmed that the distinctive closure system with the H padlock can constitute a valid trade mark, and found that differences in the lettering (H versus NDG) were not sufficient to eliminate the risk of confusion.
This case illustrates the benefit of combining copyright and trade mark protections in the fashion industry, safeguarding both the overall form (copyright) and specific elements like the closure system (trade mark), and ensuring protection beyond the expiration of copyright for certain elements.
It is noteworthy that the court ruled that NFTs depicting the bags on the Opensea platform also infringed the copyright and trade mark rights associated with the bags. The court ordered the removal of these NFTs from the Opensea platform so that they become definitively inaccessible to the public.
Finally, the judgment also highlights the importance of structured rights allocation within a group of companies, which enables different entities to act independently in this type of proceeding. The court awarded damages of €180,000 to Hermès Sellier for copyright and trade mark infringement, and €40,000 to Hermès International for trade mark infringement only, in line with the principle of individualising damages. The decision reaffirms the robustness of French intellectual property protection in the fashion sector, demonstrating the effectiveness of combined protections and clarifying the assessment of originality and damages.
See here.
EU
EU General Court Overturns EUIPO and Finds Likelihood of Confusion between 'ECOVER' and 'ECOVIE' Trade marks
On March 2025, the General Court delivered an important decision in a trade mark case opposing the People Against Dirty Holdings Ltd, to the European Union Intellectual Property Office (EUIPO).
This case arose from a trade mark opposition filed by People Against Dirty (the rightsholder of the eco-friendly cleaning brand "ECOVER") against the application of the figurative trade mark "ECOVIE". The EUIPO's Opposition Division had initially rejected ECOVER's opposition, and this rejection was upheld by the EUIPO Board of Appeal. In response, ECOVER brought an action before the General Court, seeking to overturn the EUIPO's decision and prevent the registration of "ECOVIE".
The core legal issue was whether the ECOVIE sign was likely to cause confusion with the earlier ECOVER trade marks under Article 8.1(b) of the EU Trade mark Regulation (EUTMR). This provision bars registration of a trade mark if, because of its similarity to an earlier trade mark and the identity or similarity of the goods, there exists a likelihood of confusion on the part of the public. The General Court conducted a global assessment of the likelihood of confusion, examining the trade mark's similarity from all angles and the distinctiveness of the ECOVER trade mark:
Visual Comparison: The Court found that ECOVER and ECOVIE are visually similar, to an average degree. Both are short words of identical length, and both begin with "ECO". Furthermore, the endings "VER" and "VIE", though not identical, share three letters and start with the letter "V".
Phonetic Comparison: The Court also found the two signs have an average degree of similarity from a phonetic point of view. Both ECOVER and ECOVIE contain the prefix "eco", which will be pronounced in the same way by the general public. Furthermore, while "-ver" and "-vie" have different pronunciations, they each start with a "v" sound. Finally, the length of the word element of each trade mark is identical.
Conceptual Comparison: Conceptually, both trade marks coincided in the prefix ECO, which was found to be descriptive as regards the ecological character of the goods at issue. However, because it is descriptive, it was concluded that ECO had a limited impact on the similarity of the signs taken as a whole.
Distinctive Character of ECOVER: The EUIPO Board of Appeal considered ECOVER's distinctiveness to be below average. The General Court rejected this view. It held that ECOVER, as a whole, must be considered as having an average level of distinctiveness in the marketplace.
Given these findings, the General Court concluded that, with identical goods on both sides (eco-friendly cleaning products), the EUIPO incorrectly considered that there was no likelihood of confusion between the two trade marks. The decision of the EUIPO Board of Appeal was therefore annulled.
See here.
