Topic: Intellectual Property

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

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

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

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

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

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

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”

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?

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

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

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

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

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?

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

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

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

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

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

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

Proactive Trademark Registration Strategy Can Prevent Costly Customs Issues in China

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

Keezio v. The Shrunks: the Cost of a Counterclaim

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

Federal Court Issues Consolidated IP Guidelines

On May 18, 2021, the Federal Court (FC) issued amended Case and Trial Management Guidelines for Complex Proceedings (the Updated FC Guidelines). As we previously reported, the FC first issued the FC Guidelines to consolidate and address topics in earlier FC Notices to the Profession. Notable amendments: The Updated FC Guidelines include the following notable … Continue reading

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

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

Canada Consults on Online Copyright Reform

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

Strategies with marks and names for foreign enterprises entering China

Authored by Frank Liu, Shanghai Pacific Legal   Although the pandemic has had a significant impact on economies around the world this year, China’s buoyant economy has continued to attract a significant amount of foreign investment. In contrast to foreign enterprises with mature operations in China, a new enterprise will often face the issue of … Continue reading
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