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
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
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
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
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
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
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
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
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
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
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
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
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
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
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
Since the start of the COVID-19 pandemic, numerous Chinese trademark squatters have surfaced with applications for marks closely related to the pandemic, such as “雷神山” (“Lei-Shen-Shan” in Chinese, which is a hospital built in response to the pandemic), “火神山” (“Huo-Shen-Shan” in Chinese, also meaning a hospital built in response to the pandemic), “方舱” (“Fang-Cang”, which … Continue reading
Marketing testing procedures and results often provides compelling data to influence customer decisions. But, doing so may impede potential trade secret misappropriation claims. As further described below, a federal court recently granted summary judgment against a trade secret misappropriation claim because the company advertised information about testing equipment, operations, and outcomes. (S&G Labs Hawaii v. … Continue reading
In the last decade there has been an exponential increase in the amount of patent filing originating from China, which, according to a recently published USPTO report, can be attributed to certain non-market factors including subsidies and targets set by various governmental authorities in China. Coincidently, or perhaps not coincidentally, the China National Intellectual Property … Continue reading
Sampling is a popular form of music borrowing, and it is common practice for artists to experiment and create derivative works of an existing song before obtaining a license from the copyright holder. This creative process received significant attention in a copyright infringement dispute brought by singer songwriter, Tracy Chapman, against rapper, Onika Tanya Maraj … Continue reading
2020 was a year of change and challenge. This holds true not only for the way we live and work, but also in relation to the patent laws and practices in the People’s Republic of China (“PRC”). In the last year, a number of significant amendments affecting various aspects of patent prosecution and enforcement were … Continue reading
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
On January 18, 2021, the Federal Court (FC) issued its latest COVID-19 Practice Direction, which supersedes all prior COVID-19 practice directions. The FC’s facilities in Ontario and Quebec have been closed in light of the recent public health measures to combat the pandemic. The FC will continue its operations remotely in these two provinces until … Continue reading
Changes to the design system under consideration set to benefit Australian Designers – Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 As we kick off 2021, Australian designers may soon be bringing in the New Year with new design laws. The Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 (the Bill) … Continue reading
The UK left the EU on 31 January 2020 and is currently in the Brexit Transition Period. This will end at 11pm on 31 December 2020 – defined in legislation as “IP Completion Day”. The expiry of the Transition Period on 31 December 2020 will impact the protection of trade marks and designs in the EU and the … Continue reading