Topic: Intellectual Property

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(Un)conscious Marketing: Is green really the new black?

As we settle into a new calendar year, we reflect on the Australian Competition and Consumer Commission’s (ACCC) 2022/2023 compliance and enforcement priorities announcing, amongst other priorities, their commitment to resolving consumer and fair trading issues regarding environmental claims and sustainability. In a recent speech at the Sydney Morning Herald Sustainability Summit, ACCC Deputy Chair … Continue reading

Raising our (Ad) Standards: What environmental claims have Australian regulatory bodies deemed acceptable (or not)?

By Georgina Hey (AU) and Isobel Taylor (AU) on February 27, 2023 Posted in Advertising, Ethics, Intellectual Property, Litigation

The recent announcement that the self-regulated Australian Association of National Advertisers’ (AANA) will be undertaking a review of the AANA Environmental Claims Code (Environmental Code) follows the growing community concern about the environment, increased sustainability claims and climate change. The review will focus on making certain that the Environmental Code is meeting its objectives in … 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

Transliterations of Chinese Characters Require a Translation Statement

By Nathan Mannebach (US) on January 30, 2023 Posted in Intellectual Property, Trademark

The Trademark Trial and Appeal Board (“TTAB”) refused registration of the mark “ZHIMA” because the applicant, Advanced New Technologies Co., Ltd., did not submit a translation of ZHIMA into English. In re Advanced New Techs. Co., 2023 TTAB LEXIS 2, 2023 WL 181172 (TTAB Jan. 12, 2023). In the original refusal, the Examining Attorney determined … Continue reading

USPTO Adds 75 Climate and Green-Tech Terms to Trademark ID Manual

By Kaylee A. Sill (US) on January 27, 2023 Posted in Intellectual Property, Trademark

Earlier this month, the United States Patent and Trademark Office (USPTO) announced that it is adding new climate and green tech-related terms to the Trademark ID Manual. The USPTO has already added 75 terms that include biomethane, research and development in the field of wind energy, and treatment of captured landfill gasses. Practically, the addition … Continue reading

The Battle Continues After TTAB Refuses Registration for #LAW for Failure to Function as a Trademark

By Kirsten Hash (US) on January 25, 2023 Posted in Intellectual Property, Trademark

The Trademark Trial and Appeal Board (“TTAB”) refused registration of #LAW on the Principal Register finding that #LAW failed to function as a trademark. Pound Law, LLC (“Pound Law” or “Applicant”) was unable to convince the Board that its vanity phone number functions as a trademark for legal services and legal referral services. In re … Continue reading

TTAB Sustains Opposition Based on Applicant’s Failure to Secure the Consent of a Living Individual

By Felicia Boyd (US) and Kirsten Hash (US) on January 4, 2023 Posted in Intellectual Property, Trademark

Terminal Moraine Inc. (“Applicant” or “Terminal Moraine”) sought registration on the Principal Register of the mark: for the following goods and services: Mystery Ranch, Ltd. (“Mystery Ranch” or “Opposer”) opposed registration of the DANA DESIGN mark based on an alleged false suggestion of a connection with Mystery Ranch and Dana Gleason, Mystery Ranch’s co-owner, under … Continue reading

Supreme Court to Examine the Reach of the Lanham Act to Impose Liability on Conduct Outside of the United States

By Felicia Boyd (US) and Tim Kenny (US) on November 29, 2022 Posted in Intellectual Property, Trademark

Sections 32(1)(a) and 43(a)(1)(A) of the Lanham Act impose civil liability on any person who “use[s] in commerce” a trademark in a manner that “is likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. 1114(1)(a); 15 U.S.C. 1125(a)(1). Notably, the Lanham Act defines commerce broadly as “all commerce which may lawfully … Continue reading

NFTs and IP – Your opportunity to comment

By Felicia Boyd (US) and Susan Ross (US) on November 23, 2022 Posted in Copyright, Intellectual Property, Patents, technology and innovation, Trademark

On November 23, 2022, the US Patent and Trademark Office and the US Copyright Office issued a request for public comment on the subject of Non-Fungible Tokens (NFTs) and intellectual property rights. Comments are due by Monday, January 9, 2023. In addition, the Offices will offer three public roundtables: one panel on NFTs and patents … 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

Aristocrat Technologies: The Future Patentability of Gaming Technology and Computer-Implemented Inventions

By Cameron Harvey (AU) and Isobel Taylor (AU) on September 27, 2022 Posted in Intellectual Property

Last month, the High Court dismissed an appeal by gaming technology provider Aristocrat Technologies over whether computerised components in their electronic gaming machines (EGMs) which triggered a “feature game” constituted patentable subject matter. The judgment was split evenly between the six justices. Although in theory the ruling should provide more clarity on the increasingly important … Continue reading

Authorization of certain IP-related transactions in Russia

By Tim Kenny (US) on May 9, 2022 Posted in Intellectual Property

The ink was not even dry on the update regarding Russia-related IP issues that we published last week, when we learned of two more major developments. The USPTO recently issued the following statement on engagement with Russia, the Eurasian Patent Organization and Belarus: Per guidance issued by the U.S. Department of State, the United States Patent and Trademark Office … Continue reading

Key current considerations in handling IP rights in Russia

By Tim Kenny (US) on May 9, 2022 Posted in Intellectual Property

February 24, 2022, Russian troops poured over the border into Ukraine, unleashing unimaginable human suffering and widespread destruction of property. Russia’s aggression also ignited negative consequences in the international economy that continue to increase and cascade throughout all sectors and corners of the globe. As companies and other entities struggle to navigate the broader macro-economic … Continue reading

Russia enables free use of Russian patents and other intellectual property of rights holders in countries committing “unfriendly acts”

By Clemens Rübel and Valerie Barker on April 8, 2022 Posted in Intellectual Property, Patents

On 7 March 2022 a decree of the Russian government took effect, announcing that compensation need not be paid for the unauthorised use of Russian patents, utility models and designs to rights holders connected with foreign countries committing “unfriendly acts” against Russian legal entities and individuals. In the case of patents, the citizenship of the … 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

Please, sir, I want some more: Orphan works and other copyright law reforms

By Jackie O'Brien (AU) and Isobel Taylor (AU) on March 3, 2022 Posted in Copyright, Intellectual Property

Late last year, the Australian government released the long-awaited Exposure Draft of the Copyright Amendment (Access Reform) Bill 2021 (Cth) (Bill). The Bill is designed to implement aspects of the Government’s response to the Productivity Commission’s 2016 Inquiry into Intellectual Property Arrangements (on which we reported at the time here and here). As is often … 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

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

Planning to import chemicals in to Australia from overseas?

By Georgina Hey (AU) and Anthony Brzoska on October 19, 2021 Posted in Consumer goods, Intellectual Property

Australian businesses are increasingly turning to overseas manufacturers to fulfil domestic demand for chemicals and chemical-based consumer products. Year on year, figures show that Australian companies are importing increasing volumes of these products, with some of the strongest performers coming from the domestic fuel, pharmaceutical, and cosmetic sectors of the chemicals-based consumer market. The advantages … 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

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

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