Topic: Intellectual Property

Subscribe to Intellectual Property RSS feed

TTAB rules reckless disregard for the truth constitutes fraud

Photo of Kaylee A. Sill (US)By Kaylee A. Sill (US) on 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

Photo of Felicia Boyd (US)By Felicia Boyd (US) on 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

Photo of Will GartonPhoto of Farah Mukaddam (UK)By Will Garton and Farah Mukaddam (UK) on 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?

Photo of Georgina Hey (AU)By Georgina Hey (AU) and Anthony Brzoska on 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

Photo of Christopher WilsonBy Christopher Wilson and Kevin Bushell on 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

Photo of Justin Davidson (HK)Photo of Phoebe Poon (HK)Photo of Emma QianBy Justin Davidson (HK), Phoebe Poon (HK) and Emma Qian on 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

Photo of Justin Davidson (HK)Photo of Phoebe Poon (HK)By Justin Davidson (HK), Phoebe Poon (HK) and Leslie Xu on 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

Photo of Georgina Hey (AU)Photo of Maxine RichardBy Georgina Hey (AU) and Maxine Richard on 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

Photo of Jackie O'Brien (AU)By Jackie O'Brien (AU) on 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

Proactive Trademark Registration Strategy Can Prevent Costly Customs Issues in China

Photo of Justin Davidson (HK)Photo of Phoebe Poon (HK)By Justin Davidson (HK) and Phoebe Poon (HK) on Posted in Brands, Intellectual Property, Trademark
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

Photo of Christopher WilsonBy Christopher Wilson on 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

Federal Court Issues Consolidated IP Guidelines

Photo of Caroline Henrie (CA)Photo of Kristin Wall (CA)By Caroline Henrie (CA) and Kristin Wall (CA) on Posted in Intellectual Property, Litigation
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

Photo of Sarah PenningtonBy Sarah Pennington on 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

Canada Consults on Online Copyright Reform

By NRF Digital Team on 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

Strategies with marks and names for foreign enterprises entering China

By Frank Liu on Posted in Intellectual Property
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

CNIPA responds to a pandemic of COVID-related TM Applications

Photo of Justin Davidson (HK)Photo of Phoebe Poon (HK)By Justin Davidson (HK), Phoebe Poon (HK) and Jerry Huang on Posted in Intellectual Property, Trademark
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

Testing and trade secrets: marketing may eliminate rights

Photo of Sean Patrick McGinley (US)By Sean Patrick McGinley (US) on Posted in Advertising, Intellectual Property
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

Combating the unsustainable rise of patent application numbers in the PRC

Photo of Justin Davidson (HK)Photo of Stanley NgBy Justin Davidson (HK) and Stanley Ng on Posted in Intellectual Property, Patents
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

GIVE ME ONE REASON (Why I Should Settle this Copyright Infringement Dispute)

Photo of Frances Drummond (AU)By Frances Drummond (AU) on Posted in Copyright, Intellectual Property
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

Michael Jordan deserves an apology from Qiaodan Sports for infringing his name rights for over 20 years

Photo of Justin Davidson (HK)Photo of Phoebe Poon (HK)By Justin Davidson (HK) and Phoebe Poon (HK) on Posted in Brands, Intellectual Property, Trademark
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

Federal Court updates guidance on COVID-19

Photo of Caroline Henrie (CA)Photo of Brian R. Daley (CA)By Caroline Henrie (CA) and Brian R. Daley (CA) on Posted in Enforcement, Intellectual Property
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

Simpler by Design

Photo of Georgina Hey (AU)Photo of Matt Allen (AU)By Georgina Hey (AU) and Matt Allen (AU) on Posted in Intellectual Property
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
LexBlog