Topic: Brands

China – Suspension of Trade Mark Applications More Readily Available?

In our previous post (here), we talked about a change being proposed by the China National Intellectual Property Administrative (commonly known as CNIPA), prohibiting repeated filings for the same trade mark. This was particularly concerning to brand owners and trade mark practitioners because, presently, it has been common practice to re-file identical back-up applications to … Continue reading

Supreme Court Rules in Favor of Jack Daniel’s in BAD SPANIELS Case: Parody Marks Can Still Function as A Source Identifier

By Meg K. Tierney (US) on June 9, 2023 Posted in Brands, Trademark

The United States Supreme Court issued its decision in a years-long dispute between Jack Daniel’s and VIP Products LLC (“VIP”) over a humorous dog toy which is intended to mimic the label of a Jack Daniel’s whisky bottle. Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. ____ (2023). The Court’s opinion focused on … Continue reading

Yet Another Change Coming Up? Structural Changes to CNIPA and China’s Potential 5th Amendment to Trademark Law

By Justin Davidson (HK) and James Kwong (HK) on April 27, 2023 Posted in Brands, Intellectual Property, Trademark

We are just a few months into 2023, but we are already seeing a number of proposed changes to Chinese Trademark Law. We wish to draw attention to some of the upcoming structural changes to the China National Intellectual Property Administration (commonly known as CNIPA) and to highlight a few draft amendments to China’s Trademark … Continue reading

NUMB: BOTOX reputation insufficient to stop PROTOX

By Cameron Harvey (AU), Georgina Hey (AU), Mindaugas Skavronskas and Isobel Taylor (AU) on April 23, 2023 Posted in Brands, Consumer goods, Intellectual Property, Trademark

Earlier this month, the High Court of Australia ultimately rejected trade mark infringement and misleading/deceptive conduct claims by Allergan (owner of the injectable BOTOX®) against Self Care’s anti-wrinkle skincare products PROTOX and INHIBOX (marketed under the slogan ‘instant Botox® alternative’). The case has been running for 6 years. Allergan relied on the overwhelming reputation of … Continue reading

Three Year Battle Ends with Lizzo Securing Registration for 100% THAT BITCH Mark

By Kaylee A. Sill (US) on February 17, 2023 Posted in Brands, Intellectual Property, Trademark

In a precedential decision, the Trademark Trial and Appeal Board (the “Board”) reversed two refusals to register Grammy-winning singer Lizzo’s 100% THAT BITCH trademarks. Lizzo’s company, Lizzo LLC, applied for two word trademarks in June 2019 for 100% THAT BITCH for various types of clothing after she popularized the phrase in her 2017 hit single … Continue reading

Are we (virtually) there yet? Waiting for the rise of the metaverse from a brand owner’s perspective

By Georgina Hey (AU) and Isobel Taylor (AU) on September 29, 2022 Posted in Brands, Consumer goods, Intellectual Property, Patents, technology and innovation, Trademark

We are now almost one year on from Mark Zuckerberg’s much talked-about October 2021 letter announcing, among other things, the change of the name of his company from Facebook to Meta, reflecting the company’s commitment to revolutionising social connection through virtual reality. Zuckerberg’s expansive vision of a metaverse currently remains more of a fantasy than … Continue reading

Vans secures temporary restraining order barring promotion and sale of Wavy Baby Shoes

By Kirsten Hash (US) and Felicia Boyd (US) on September 13, 2022 Posted in Brands, Consumer goods, Trademark

In Vans, Inc. v. MSCHF Product Studio, Inc., No. 22CV2156WFKRML, 2022 WL 1446681 (E.D.N.Y. Apr. 29, 2022), shoe company Vans, Inc. (“Vans”) prevailed in obtaining a temporary restraining order and preliminary injunction against art collective MSCHF Product Studio, Inc. (“MSCHF”), restraining promotion and sale of its WAVY BABY shoes. Vans asserted that the WAVY BABY … Continue reading

TTAB rules RANCHERO and EL RANCHERO marks confusingly similar

By Kaylee A. Sill (US) and Felicia Boyd (US) on August 10, 2022 Posted in Brands, Trademark

In a non-precedential decision, the TTAB held that use of the word and stylized mark EL RANCHERO for “food products made of corn, namely, corn chips, tortillas and tostadas” were confusingly similar to the word and design marks RANCHERO for “cream” and “Mexican style sausages, namely chorizo and bolita.”[1] The dispute over the “Ranchero” marks … Continue reading

PepsiCo wins appeal over MTN DEW RISE ENERGY trademark dispute

By Kaylee A. Sill (US) and Felicia Boyd (US) on August 10, 2022 Posted in Brands, Consumer goods, Trademark

PepsiCo. Inc. recently convinced the U.S. Court of Appeals for the Second Circuit to throw out a preliminary injunction granted by a New York federal judge last fall that prevented PepsiCo from using MTN DEW RISE ENERGY on its canned energy drinks.[1] In March 2021, PepsiCo launched MTN DEW RISE ENERGY featuring cans with a … Continue reading

Guidance on Metaverse and NFTs trade marks

By Clément Monnet and Eloïse Patocki-Tomas on July 14, 2022 Posted in Brands, Trademark

On June 23rd, 2022, the European Union Intellectual Property Office (“EUIPO”) published its recommendations regarding the class to be opted for when applying for a trademark designating virtual goods, non-fungible tokens (“NFT(s)”) and other products displayed in metaverse. Considering the increase in the applications containing terms relating to virtual goods and NFTs, EUIPO’s clarifications simplify applicants burden … Continue reading

Québec French Language Law Reform: Upcoming Changes for Businesses

By Catherine Daigle (CA) and NRF Digital Team on May 26, 2022 Posted in Advertising, Brands, Trademark

Following a well-publicized debate, on May 24, 2022, the National Assembly of Québec finally passed the Act respecting French, the official and common language of Québec (Bill 96), a major reform of the 1977 Charter of the French Language (the Charter, also known as Bill 101). The Charter sets out language requirements for product packaging, … Continue reading

Trade mark ownership: As easy as A-B-C?

By Alyson Poole (AU) on March 28, 2022 Posted in Brands, Enforcement, Intellectual Property, Trademark

Trade mark ownership is an important consideration for any business. Ensuring that a business holds all rights to enable it to make full use of its trade mark should be front of mind in any branding consideration. Unfortunately however, while seemingly obvious, the concept of ownership is sometimes overlooked and can be more complex than … Continue reading

TTAB rules reckless disregard for the truth constitutes fraud

By Kaylee A. Sill (US) on February 22, 2022 Posted in Brands, Consumer goods, Intellectual Property, technology and innovation

In Chutter, Inc. v. Great Management Group, LLC, a precedential decision, the Trademark Trial and Appeal Board (TTAB) held that recklessly false representations made during the course of the trademark application process satisfy the level of intent required to support a finding of fraud before the United States Patent and Trademark Office (USPTO).[1] The TTAB’s … Continue reading

Spotify successfully opposes POTIFY applications based on dilution by blurring

By Felicia Boyd (US) on February 9, 2022 Posted in Brands, Copyright, Intellectual Property, Trademark

In its first precedential decision of 2022, the Trademark Trial and Appeal Board (“TTAB”) sustained two oppositions filed by Spotify AB (“Spotify”) against registration of POTIFY for use in connection with an online ordering platform and community for medical and recreational cannabis consumers to connect with legal marijuana retailers. Both oppositions were sustained on Spotify’s … Continue reading

Protection for partial products as unregistered Community designs

By Manuel Merling (DE) and Daniel Marschollek (DE) on January 12, 2022 Posted in Brands, General, Trademark

The European Court of Justice (ECJ) recently ruled on the possibility of claiming protection for a part of a product or a component part of a complex product as an unregistered Community design. The ECJ ruled that protection as an unregistered Community designs is possible if the underlying product itself has been made available to … Continue reading

Canadian Federal Court of Appeal affirms that use of variant was use of Registered Mark

By Christopher Wilson and Kevin Bushell on October 13, 2021 Posted in Brands, Intellectual Property, Trademark

The recent Federal Court of Appeal decision in Geox S.P.A. v. De Luca considered whether modifications to the appearance of a trademark went beyond the scope of the registration. The Court also highlighted important factors for brand owners to consider when licensing and refreshing a corporate logo. The Use of Variants The Registrar of Trademarks … Continue reading

Trademark protection in France: distinctiveness may result from the addition of an ornamental sign to usual or descriptive language

By Clément Monnet on October 4, 2021 Posted in Brands, Trademark

In a judgment of 17 September 2021, the Paris Court of Appeal has ruled in favour of the validity of the semi-figurative trademark a descriptive verbal element . The Judges highlighted in particular that, although the expression “vente privée” is a generic and usual designation of the services provided, the addition of a pink butterfly … Continue reading

Beijing IP Court pilots mediation program for Trademark Office appeals

By Justin Davidson (HK), Phoebe Poon (HK) and Emma Qian on September 7, 2021 Posted in Brands, General, Intellectual Property, Trademark

In response to the rapid increase in the number of trademark prosecution administrative review cases (appeals from the Trademark Office – CNIPA), the Supreme People’s Court issued a Judicial Opinion on “Promoting the Reform of Administrative Litigation Proceedings by Dividing Complicated Cases and Simple Cases ” (the “Opinion”) in May 2021. The Opinion aimed to … Continue reading

A New Progress: China Issues Judicial Interpretation for Applying Punitive Damages in Intellectual Property Infringement Cases

By Justin Davidson (HK), Phoebe Poon (HK) and Leslie Xu on July 22, 2021 Posted in Brands, Counterfeiting, Intellectual Property

Since 2013, China has gradually introduced the concept of punitive damages in the amendments to several laws on intellectual property rights, in which the elements of punitive damages were also stipulated, namely the infringement has to be “intentional” or “malicious” and “serious”. In 2020, the Civil Code was officially adopted, and it stipulates that the … Continue reading

Proactive Trademark Registration Strategy Can Prevent Costly Customs Issues in China

By Justin Davidson (HK) and Phoebe Poon (HK) on July 2, 2021 Posted in Brands, Intellectual Property, Trademark

Although it is not strictly necessary to file for a trade mark registration before using a mark, there are significant advantages to securing trademark protection, particularly in a company’s primary markets. Amongst other benefits, a trademark registration gives the owner the exclusive right to use that mark in association with the goods and services covered … Continue reading

Amazon’s 2020 Brand Protection Report – What Brand Owners Need to Know

By Sarah Pennington on May 27, 2021 Posted in Advertising, Brands, Counterfeiting, General, Intellectual Property, Trademark

On May 10, 2021, Amazon released its 2020 Brand Protection Report (the Report), the first of its kind published by the e-commerce giant. The Report offers insight into Amazon’s brand protection approach and efforts over the past year, including proactive controls, brand tools, and consequences for “bad actors”. With a growing number of fraudsters cropping … Continue reading

NATIERRA: Presenting Fresh Evidence on Appeal

By Caroline Henrie (CA) and NRF Digital Team on February 17, 2021 Posted in Brands, Enforcement, Trademark

A recent decision of the Federal Court, Brandstorm, Inc. v Naturally Splendid Enterprises Ltd., 2021 FC 73, has confirmed that where “sufficiently substantial and significant” evidence is presented on review, the appeal of a decision of the Registrar of Trademarks (the Registrar) pursuant to section 56(5) of the Trademarks Act (the “Act”) can be done … Continue reading

Expedited Examination for COVID-19 Related Marks Avoid Systemic Delays in Canadian Examination

By Caroline Henrie (CA) on February 3, 2021 Posted in Brands, Trademark

The delays in Canadian trademark examination are becoming excruciating. The Trademarks Act and the Trademark Regulations provisions do not expressly provide for expedited examination of a Canadian trademark application. The long-standing practice of the Canadian Intellectual Property Office (“CIPO”) was to refuse requests for the expedited examination. Section 2.2 of the Trademark Examination Manual, the … Continue reading

Michael Jordan deserves an apology from Qiaodan Sports for infringing his name rights for over 20 years

By Justin Davidson (HK) and Phoebe Poon (HK) on February 1, 2021 Posted in Brands, Intellectual Property, Trademark

According to the Shanghai Xinhua News Agency, the Shanghai Second Intermediate People’s Court handed down a first instance decision on 30 December 2020 in favour of Michael Jordan against Qiaodan Sports Company and Bairen Trading Company (both Chinese local companies) in respect of infringement of Michael Jordan’s name rights. In the lawsuit, Michael Jordan claimed … Continue reading