Topic: General

DNS – blocking under German law

By Manuel Merling (DE) on October 19, 2022 Posted in Domain names, General

In a judgement of 13 October 2022 (I ZR 111/21) – DNS-Blocking, the German Federal Court of Justice (BGH) ruled on the conditions under which rights holders can claim blocking of access to certain websites (DNS Blocking) from Internet access providers under German law. Background of the case The plaintiffs (publishing houses) initiated a legal … Continue reading

Branding alert for Royal Warrant holders

By Abida Chaudri and *Jamie Brazier (UK) on October 13, 2022 Posted in Consumer goods, General, technology and innovation

Kat friends Jamie Brazier and Abida Chaudri provide an enlightening discussion of the right to use the Royal Arms following the death of Queen Elizabeth II. It was with great sadness that the world learned, on 8 September 2022, of the death of Queen Elizabeth II the longest reigning monarch in British history. Immediately on her death, Charles III … Continue reading

Act Fast: Priority Period for Short domain names expires on 20 September

By Georgina Hey (AU) on September 15, 2022 Posted in General

Until 20 September 2022, registrants of existing Australian domain names (.com.au) can register an exactly matching short domain (.au) on a priority basis. After this date, such short domains will become available to the general public. This means if you do not act shortly, there is a risk your domain name may fall into the … Continue reading

CAFC reverses Coca-Cola TTAB win in action involving Indian soda marks

By Felicia Boyd (US) and Nathan Mannebach (US) on August 22, 2022 Posted in General

In Meenaxi Enter. v. Coca-Cola Co., 38 F.4th 1067 (Fed. Cir. 2022) the United States Court of Appeals for the Federal Circuit (“CAFC”) reversed a Trademark Trial and Appeal Board (“TTAB”) decision cancelling two registrations for marks identical to those used outside of the US by The Coca-Cola Company (“Coca-Cola”). In doing so, the CAFC held … Continue reading

Lundbeck v Sandoz – High Court decision

By Jackie O'Brien (AU) on March 15, 2022 Posted in General

1. Introduction The High Court has delivered the latest instalment in Lundbeck and Sandoz’s lengthy saga concerning escitalopram. The particular circumstances giving rise to this dispute are unique, however, the High Court’s approach to interpreting a patent licence granted by Lundbeck to Sandoz should be considered when preparing patent licences. The High Court’s decision may … 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

Federal Court of Canada Issues Default Judgment to Stop Online Infringement

By Roohie Sharma on November 17, 2021 Posted in General

Default judgment can be an effective way to stop online infringement. The Federal Court’s decision in Kaira District Co-operative Milk Producers’ Union Limited v. AMUL Canada, 2021 FC 636 is the most recent example of the effectiveness of default judgment. Kaira District Co-Operative Milk Producers’ Union Limited and Gujarat Cooperative Milk Marketing Federation Ltd. (collectively, … Continue reading

NFTs and Intellectual Property Rights

By Will Garton and Farah Mukaddam (UK) on November 1, 2021 Posted in Ethics, General, Intellectual Property, technology and innovation

Any creative endeavour is in theory capable of being tokenised or “NFT’d”. Record prices are being reached for the sale of non-fungible tokens (NFTs). But what are NFTs? How are they created? Why are they so valuable? What does the buyer own? What rights do they confer? And why should IP lawyers care? Click here … Continue reading

Combatting Online Copyright Infringement

By Sarah Pennington on October 30, 2021 Posted in Copyright, Enforcement, General

The Internet is a fantastic platform for the widespread dissemination and exchange of works and information. It is also an increasingly popular medium for infringers to illegally source and share copyrighted materials. Losing control over you work is not only frustrating, it can damage your business or brand. Fortunately, copyright law prohibits the unauthorized reproduction … Continue reading

Trick-or-Treat Trademarks

By Sarah Pennington on October 28, 2021 Posted in General

It’s that time of year again – whether you’re sneaking pieces from a child’s stash, or waiting to score some discounted leftovers off of the shelves once the big night has passed, Halloween promises a wealth of treats for candy lovers everywhere. We all have our top treats that we could spot from a mile … 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

IP Report 2021

By Georgina Hey (AU) and Maxine Richard on July 22, 2021 Posted in General, Intellectual Property, Trademark

We would like to acknowledge the contributions of Rex Lee and Amy O’Brien in preparing this blog. Intellectual Property (IP) Australia published their 9th annual edition of the Australian IP Report (the IP Report) on 29 April 2021. The IP Report, available here, offers a general overview of the current Australian IP climate. It outlines … Continue reading

Consultation Open for Australia’s Medical and Biotechnology Patent Box

By Jackie O'Brien (AU) on July 13, 2021 Posted in General, Intellectual Property, Patents

On 5 July 2021, the Government released its Discussion Paper setting out the Government’s proposal and seeking views from key stakeholders. The paper will be open for submissions until 16 August 2021. Now is the opportunity for stakeholders to put forward their suggestions as to what a patent box in Australia should entail. Patent boxes … Continue reading

Keezio v. The Shrunks: the Cost of a Counterclaim

By Christopher Wilson on June 16, 2021 Posted in Copyright, General, Intellectual Property

A recent decision from the BC Supreme Court serves as a reminder both of the risk of getting sued for defamation for publicly alleging copyright infringement, including on Amazon, and also that companies may be required to post security for costs in order to proceed with copyright and other intellectual property (IP) claims. The decision … Continue reading

Canada’s Federal Court of Appeal: Site-blocking Orders are Here to Stay

By Karen MacDonald (CA) on May 29, 2021 Posted in General

The Federal Court of Appeal, in Teksavvy Solutions Inc. v. Bell Media Inc., 2021 FCA 100 (“Teksavvy”), affirmed an order compelling non-party Internet service providers (ISPs) to block access to websites of the pirated television streaming service GoldTV. This decision confirms that blocking orders are available in Canada as a remedy to limit access to … 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

Emerging e-commerce trends in China and the potential impact on brands in a global marketplace

By Georgina Hey (AU) and Julie Zhu on May 17, 2021 Posted in General

Background E-commerce has brought many opportunities for brands to expand their footprint and tap into global markets. However, it has also given rise to a myriad of intellectual property (IP) infringement issues for companies, particularly for trade mark infringement and counterfeit activity. As the e-commerce market has matured, new trends have emerged, posing fresh challenges … Continue reading

Canadian Trademarks Office Takes Steps to Address Backlog

By Sarah Pennington on May 5, 2021 Posted in General

On May 3, 2021, the Canadian Intellectual Property Office (CIPO) published two new practice notices: (1) Measures to improve timeliness in examination; and (2) Requests for expedited examination. These notices outline CIPO’s plan to help clear its backlog of trademark applications, and to facilitate expedited review in particular circumstances. CIPO’s practice notices operate as general … Continue reading

Canada Consults on Online Copyright Reform

By Colin Hyslop (CA) on May 4, 2021 Posted in Copyright, General, Intellectual Property

On Wednesday, April 14, 2021, the Canadian government launched a consultation on “a Modern Copyright Framework for Online Intermediaries”, seeking comments from the public until May 31. The goal of this consultation is to “ensure that Canada’s copyright framework for online intermediaries reflects this evolving digital world.” Alongside the announcement of this consultation, the government … Continue reading

Revisions to PRC Medical Devices Regulations

By Justin Davidson (HK) and Stanley Ng on April 8, 2021 Posted in General

The PRC Regulations on the Supervision and Administration of Medical Devices (“Regulations”) have recently been amended and promulgated by the State Council. The new Regulations, which will be effective from 1st June 2021, provide some important changes of which the medical device industry should be aware. Under the current Regulations, a license to manufacture medical … Continue reading

Executive Order to breathe new life into Made-in-America rules

By Andre Hanson (US) and Saul Perloff (US) on January 26, 2021 Posted in Advertising, General

Federal acquisition law and regulations often require government agencies to give purchasing preference to domestic suppliers. These preferences—some of which have remained unchanged since the Eisenhower Administration—have not always been implemented consistently or effectively. That uncertain landscape may be about to change. On Monday, January 25, 2021, the Biden Administration issued an Executive Order setting … Continue reading

Federal Court of Appeal Reviews Meaning of “Use” of a Trademark in Canada

By Caroline Henrie (CA) on October 13, 2020 Posted in General, Trademark

In Miller Thomson LLP v Hilton Worldwide Holding LLP, 2020 FCA 134, the Canadian Federal Court of Appeal recently confirmed that a trademark associated with “hotel services” was valid despite no brick-and-mortar presence in Canada. More specifically, the Court acknowledged that providing incidental or ancillary services to the registered service can be considered to be … Continue reading

Protecting goodwill: When in doubt, be kind!

By Catherine Daigle (CA) and Fortunat Nadima Nadima on October 9, 2020 Posted in General, Trademark

For many people the word “BOSS” on a piece of clothing evokes the German luxury fashion house Hugo Boss. (Employers usually don’t need to affix a BOSS mark on their clothes to signal their position.) Yet for some, especially in Merseyside in the northwest of England, “BOSS” is also just a slang term used to … Continue reading

Domain Names and Online Trademarks: When is a Consumer Confused?

By Bianca Pietracupa (CA) on October 5, 2020 Posted in Advertising, Domain names, General

As more businesses move online, the value and importance of domain names and online trademark enforcement grows. The Superior Court of Quebec has reaffirmed that a confusing domain can land your business in legal trouble. The dispute arose between the unregistered trademark of Cabanons Mirabel, and confusing domain names chosen by a competitor. Cabanons Mirabel … Continue reading