• INTELLECTUAL PROPERTY RIGHTS

Gateway Inc. v OHIM, 

ECJ (Fifth Chamber)

Proprietor of the Community and national word and figurative marks filed notice of opposition against registration of the mark ‘ACTIVY Media Gateway’ in respect of all the goods covered by it, asserting likelihood of confusion

In the present case registration of the word sign ‘ACTIVY Media Gateway’ has been protested claiming that there is likelihood of confusion confusion within the meaning of Article 8(1)(b) of Regulation No 40/94. It is asserted that Article 8(4) and (5) of the said regulation had been infringed. The ECJ upheld CFI decision, which holds that there was no visual, phonetic or conceptual similarity between the two marks and the mark applied by the applicant is for information technology products and services. Further, it has been considered that "activy" is the distinctive and dominant ingredient of the applicant's mark, and "gateway" being descriptive of the goods and services.

United States Court of Appeals, Fifth Circuit

These consolidated appeals concern a trademark dispute between four universities and an apparel company and its principal. The Universities alleged in the district court that the defendants violated the Lanham Act and infringed their trademarks by selling t-shirts with the schools' color schemes and other identifying indicia referencing the games of the schools' football teams. The .S. Court of Appeals for the Fifth Circuit (Court) upheld the actual damages and lost profits awarded to the universities, finding that their trademark rights were infringed when a clothing retailer, Smack Apparel, sold shirts featuring the colors of the universities and slogans referring to their football programs. Although team colors have been relevant to prior trademark decisions, the color analysis in those cases was ancillary to the question of whether a word mark or logo had been infringed.