Topic: General

Implementation of the Madrid Protocol in Hong Kong

By Justin Davidson (HK) and Phoebe Poon (HK) on June 24, 2020 Posted in General, Trademark

On 19 June 2020 Hong Kong gazetted the Trade Marks (Amendment) Ordinance, paving the way for the application of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) in Hong Kong. This follows on from the outcome of a public consultation conducted back in 2014. Currently, there are 106 … Continue reading

Canada’s Trademark Overhaul – 1 year out

By Karen MacDonald (CA) on June 17, 2020 Posted in General, Trademark

On June 17, 2019, Canada’s trademark regime went through the most significant changes in over 50 years. Where have we landed, a year after the new provisions came into force? One thing seems certain: Canada’s Trademark Examiners are loving the new “non-distinctive” objection. It has become the objection du jour, and sometimes appears to be … Continue reading

Google Goes Organic to Fight Counterfeiters

By Mat Brechtel (CA) on June 16, 2020 Posted in Counterfeiting, Domain names, General, Trademark

In the midst of the global pandemic, Google has provided some welcome news in the ongoing fight against counterfeiters. Google recently updated its legal complaint system to allow trademark owners to report webpages that sell or promote the sale of counterfeit goods, and has committed to removing the webpages from the search engine’s organic (non-advertisement) … Continue reading

Insights from the Australian Intellectual Property Report 2020

By Amanda Caldwell (AU) and Vicky Zhang on June 16, 2020 Posted in Copyright, General, Patents, Trademark

Intellectual Property (IP) Australia published their 2020 edition of the Australian IP Report (the IP Report) on 24 April 2020. The IP Report, which can be accessed here, provides a current overview of the IP sector in Australia and the latest data on the IP rights (IPR) administered by IP Australia. Reports such as the … Continue reading

Singapore leads the way on promoting its IP Hub

By Justin Davidson (HK) and Jeremiah Chew on June 11, 2020 Posted in General, Trademark

The Intellectual Property Office of Singapore (IPOS) made headlines recently when its Chief Executive, Daren Tang, was appointed as the next Director-General of the World Intellectual Property Organisation with effect from 1 October 2020 (see this link for more information). As Chief Executive of IPOS since November 2015, Daren has earned accolades for several initiatives … Continue reading

Canadian Intellectual Property Office Further Extends Deadlines to July 6, 2020

By Mark Edward Davis (CA) and Sarah Pennington on June 10, 2020 Posted in General

The Canadian Intellectual Property Office (CIPO) has announced a further extension of deadlines to July 6, 2020. All statutory deadlines under the Patent Act, the Trademarks Act, and the Industrial Design Act falling between March 16, 2020 and July 3, 2020 are now automatically extended to July 6, 2020 as a result of the ongoing … Continue reading

The effect of Brexit on .eu domain names

By Manuel Merling (DE) and Clément Monnet on June 7, 2020 Posted in Domain names, General

Since the United Kingdom (UK) will be a third country after the end of the transition period (ending December 31, 2020) EU law will no longer apply[1]. This change of the legal situation also has effects on the .eu domain names. Amid the transition period from 1 February 2020 through to 31 December 2020 during … Continue reading

New Balance lands a win in China

By Justin Davidson (HK) and Phoebe Poon (HK) on June 1, 2020 Posted in Counterfeiting, General, Trademark

New Balance, the US sports shoemaker, has had a tough time of it in the PRC IP courts over the last twenty years, in particular against Niu Ba Lun (China) Co., Ltd. and its predecessors (New Barlun), a serial Chinese copycat. A low point was perhaps in 2016, when the Guangdong Higher People’s Court had … Continue reading

Courts Across Canada Continue Reopening Plans

By Mat Brechtel (CA), Madeleine Hodgson (CA) and Renaud Garon Gendron on May 28, 2020 Posted in Copyright, Counterfeiting, General

Update – Response from Canadian Courts to COVID-19 As many Canadian jurisdictions begin to relax certain social distancing measures, it is time for an update on the status of the courts across Canada. As with the rest of us, the courts across Canada continue to take steps to combat the spread of COVID-19, but are … Continue reading

Canadian Intellectual Property Office Further Extends Statutory Deadlines to June 15, 2020

By Mark Edward Davis (CA) and Caroline Henrie (CA) on May 27, 2020 Posted in General

The Canadian Intellectual Property Office (CIPO) announced that it has further extended deadlines to June 15, 2020. In order to reduce the impact of COVID-19 and ensure intellectual property owners are not prejudiced by the pandemic, CIPO has further extended deadlines under the Patent Act, the Trademarks Act and the Industrial Design Act to June … Continue reading

Ready, set, Zoom! Trials in the time of COVID-19

By James Jeffries-Chung and Mat Brechtel (CA) on May 27, 2020 Posted in General

On May 21, 2020, in Rovi Guides, Inc. v Videotron Ltd., the Federal Court of Canada took an important step forward in its digital evolution, setting the parameters for a remote trial to be conducted by videoconference, following a trial management conference. The decision gives an indication as to how the Federal Court envisages trials … Continue reading

Canadian Intellectual Property Office Further Extends Statutory Deadlines to June 1, 2020

By Mark Edward Davis (CA) on May 14, 2020 Posted in Copyright, General, Patents, Trademark

The Canadian Intellectual Property Office (CIPO) has announced a further extension of deadlines to June 1, 2020. CIPO is working hard to continue operations as usual in these unforeseen circumstances. To ensure Canadian intellectual property owners do not have their rights compromised by the Covid-19 pandemic, CIPO has extended statutory deadlines that fall between March 16 … Continue reading

Demand may be booming, but are breaches looming? We discuss compliance with Australian Country of Origin labelling regulations in the context of COVID-19

By Georgina Hey (AU), Alyson Poole (AU) and Matt Allen (AU) on May 13, 2020 Posted in General

In recent articles, we have commented on the Australian Competition and Consumer Commission’s (ACCC) Country of Origin (COO) labelling regulations as they relate to food packaging and more recently, the ACCC’s focus for 2020 on misleading or deceptive claims relating to food packaging. Our previous articles can be reviewed here and here.… Continue reading

Be careful how you ask – Canadian court considers demand letters

By Amy Grenon (CA) and Colin Hyslop on May 11, 2020 Posted in General, Patents

In the recent decision, Fluid Energy Group Ltd v Exaltexx Inc, 2020 FC 81, the Canadian Federal Court granted an interlocutory injunction prohibiting a plaintiff patent holder in a patent infringement action from sending cease and desist letters to suppliers associated or involved with the defendant alleged infringer. This decision builds upon other recent Canadian … Continue reading

Federal Court of Canada Further Extends Suspension Period But Remains Ready for Action(s)

By Mark Edward Davis (CA) and Karen MacDonald (CA) on April 29, 2020 Posted in General

The Federal Court of Canada has just issued a new Practice Direction and Order (COVID-19): Update #2 (April 29, 2020). The April 29 Practice Direction amends the Court’s previous Updated Practice Direction and Order (COVID-19), dated April 4, 2020. The April 29 Practice Direction confirms that, subject to certain exceptions, no hearings will be held until June … Continue reading

Canadian Intellectual Property Office further extends deadlines to May 18, 2020

By Mark Edward Davis (CA) on April 27, 2020 Posted in Copyright, General, Patents, Trademark

The Canadian Intellectual Property Office (CIPO) announced today that it has further extended deadlines under the Patent Act, the Trademarks Act and the Industrial Design Act to May 18, 2020. While Canadian intellectual property owners should always consult with their professional advisors concerning specific deadlines, the general effect of CIPO’s designation means that deadlines falling … Continue reading

Court Suspensions Continue, with Some Exceptions

By Madeleine Hodgson (CA), Renaud Garon Gendron, Mat Brechtel (CA) and Mark Edward Davis (CA) on April 27, 2020 Posted in Copyright, Counterfeiting, General, Patents, Trademark

Please see our updated version of this article, published May 28, 2020. An Update on the Response from Canadian Courts to COVID-19 We are now more than a month in to social distancing measures, and it is time for an update on the status of the courts across Canada. As with the rest of us, … Continue reading

Could the use of Punitive Damages be the way forward in China?

By Justin Davidson (HK) and Phoebe Poon (HK) on April 17, 2020 Posted in Counterfeiting, General, Trademark

In September 2019, the Shanghai Pudong District People’s Court awarded triple punitive damages to Balanced Body Inc., which according to the Shanghai government news report was the first such award for a Shanghai Court to a foreign plaintiff. Background Balanced Body is a provider of Pilates equipment and education and holds PRC trade mark registrations … Continue reading

Federal Court of Canada Extends Suspension Period to May 15, 2020

By Mark Edward Davis (CA) on April 6, 2020 Posted in Copyright, General, Patents, Trademark

By Updated Practice Direction and Order dated April 4, 2020, the Federal Court has further extended the Suspension Period to May 15, 2020. It has simultaneously mapped out a strategy to keep the Court running as efficiently as possible under the circumstances. During the Suspension Period (which began March 16, 2020 and currently runs until May … Continue reading

Canadian Federal Court of Appeal Extends Suspension of Hearings to May 15, 2020

By Mark Edward Davis (CA) on April 3, 2020 Posted in Copyright, General, Patents, Trademark

In a Notice to the Parties and the Profession issued April 2, 2020, the Federal Court of Appeal has confirmed that the suspension period implemented on March 16, 2020 will be extended to Friday, May 15, 2020. All matters scheduled to be heard during this Suspension Period are adjourned. The business of the Court will … Continue reading

UPDATE: Canadian Intellectual Property Office further extends all deadlines to May 1st

By Catherine Daigle (CA) and Mark Edward Davis (CA) on March 29, 2020 Posted in Copyright, General, Trademark

In response to the continuing disruption caused by the COVID-19 outbreak, the Canadian Intellectual Property Office (CIPO) has announced on March 27, 2020 a further extension for filing deadlines – all deadlines ending in the month of April 2020 will automatically be extended to May 1, 2020. Parties in proceedings before the Trademarks Opposition Board should … Continue reading

Online Brand Management: Avoiding Toxic Social Influencers

By Bianca Pietracupa (CA), Elizabeth Williams (CA) and Amy Grenon (CA) on March 23, 2020 Posted in Advertising, General, Trademark

Online brand protection must be taken into consideration, particularly when faced with changing consumer behavior, market uncertainty and rampant misinformation. Social influencers with large audiences that value their opinions on consumer products and health regimes are a valuable tool for companies and governments looking to reach large online communities quickly. However, some influencers have been … Continue reading

Response from Canadian Courts to COVID-19

By Madeleine Hodgson (CA), Renaud Garon Gendron, Mat Brechtel (CA) and Mark Edward Davis (CA) on March 21, 2020 Posted in Copyright, General, Patents, Trademark

Please see our updated version of this article, published May 28, 2020. We know you have a lot to think about and plan right now and over the next few weeks. You can rely on us to keep your intellectual property litigation matters moving forward. To that end, we wanted to provide an update on … Continue reading

UPDATE ON COVID-19 : CIPO announces extensions in wake of outbreak in Canada

By Mihaela Dumitrean, Catherine Daigle (CA) and Mat Brechtel (CA) on March 21, 2020 Posted in Copyright, General, Patents, Trademark

Given the many challenges faced by all businesses in dealing with the COVID-19 outbreak, the Canadian Intellectual Property Office (CIPO) has advised that it will relax filing deadlines for the remainder of March 2020. This decision was first announced on March 16, 2020 and further updated yesterday, March 19, 2020. What you need to know All … Continue reading