Topic: Trademark

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Brands Around the World: Best Practices Roundtable on Protecting Your Valuable Brand

On Monday, November 13, 2017, Norton Rose Fulbright’s New York office was pleased to host an international roundtable on best practices for brand protection. Moderated by Linda Merritt of our Dallas office, the event featured presentations by: Georgina Hey, Sydney Clare Jackman, London Karen MacDonald, Vancouver Daniel Marschollek, Frankfurt / Munich The roundtable brought together … Continue reading

Getting Ready for Change – Nice Classification Comes to Canada

In anticipation of the upcoming changes to the Trade-marks Act (the “Act”), now scheduled to take place in 2019, the Canadian Intellectual Property Office (“CIPO”) is inviting owners of registered trademarks that are due for renewals as of January 2018 to voluntarily categorize the goods and services covered by their registration based on the Nice Classification … Continue reading

‘Apples, Beatles and four decades of litigation’ – Cautionary tales for start-ups settling on a new brand name

Apple: the world’s most successful company, with an estimated worth of three-quarters of a trillion dollars. It’s no wonder that would-be tech entrepreneurs around the world are sitting around in black turtlenecks, jeans and New Balance sneakers, poring over Steve Jobs’ biography and trying to work out how they might emulate his success in their … Continue reading

Rebranding 4.0: Why authenticity matters to socially-aware consumers, and how to convey it

Increasingly affordable renewables, coupled with consumers’ sensitivity to environmental, social and governance (ESG) issues, are driving a profound shift in energy markets worldwide. Nowhere is this more apparent than in brand equity, and the trust levels displayed by the public towards traditional energy businesses versus green, dynamic start-ups. Rebranding is a powerful tool to close … Continue reading

Get your IP game on: intellectual property protection and video games

The video game industry around the world and in Canada is booming. Not only does this market create new and varied forms of entertainment, it also creates jobs and generates staggering sales revenues. Industry statistics for the United States show sales of computer and video games having increased from $10.1 billion in 2009 to $24.5 … Continue reading

Promoting an innovation economy – Australian Government responds to Productivity Commission’s report into IP arrangements

We recently published an article on the potential impact on the Productivity Commission’s Inquiry Report on Intellectual Property Arrangements (Report) on Australia’s innovation economy. The Australian Government has now responded to the Report, supporting the Commission’s recommendations to reform the patent system, but stopping short of embracing the extensive copyright overhaul recommended in the Report, … Continue reading

Extending Brand Protection to Canada

Brand protection is important.  Foreign service providers interested in extending their brand equity to Canada will be encouraged by the Federal Court’s recent decision in AT&T Intellectual Property II, L.P v. Lecours, Hebert Avocats Inc., 2017 FC 734.  In this case, AT&T was able to protect its brand and maintain its Canadian trademark registration for … Continue reading

Protest Site Grounded for Using Adulterated Trademarks

In United Airlines, Inc. v. Cooperstock, 2017 FC 616, the Federal Court of Canada enjoined a disgruntled traveler from using colorable variations of United Airlines’ trademarks on a protest website he set up at www.untied.com. Using an anagram of the official www.united.com website as a domain name, the impugned material posted on the site included adulterated … Continue reading

Norton Rose Fulbright Canada LLP hosts CIPO Consultations on Trademark Regulations

From June 19 to July 21, 2017, the Canadian Intellectual Property Office (“CIPO”) held public consultations on proposed amendments to the Trademark Regulations. The amendments, part of the modernization of Canada’s intellectual property framework, follow from changes made to the Trademarks Act to comply with the requirements of the Madrid Protocol, Singapore Treaty, and Nice … Continue reading

The Slants Win: SCOTUS rules “Disparaging” trademark provision unconstitutional

On June 19, 2017, the United States Supreme Court issued a much-anticipated decision, holding that the so-called “disparagement clause” of the Lanham Act is an impermissible restriction on free speech under the First Amendment. The ruling is the culmination of years of litigation, and clears the way for Simon Shiao Tam and the Slants to … Continue reading

Maximise your IP to enhance franchise value

Franchising is, in essence, a business model built on intellectual property (IP) – it provides a useful forum for commercialising IP.  Franchisors gain by sharing use of their IP (including trade marks, patents, designs, copyright materials, know-how and/or confidential information) in return for a fee, and franchisees benefit by obtaining the benefit of an established … Continue reading

Beware the ghost of handshakes past – Could your IP licence survive termination?

What happens when an IP licence agreement is terminated? The obvious answer would of course be that the licence terminates too.  However, as the latest instalment in an ongoing saga involving the well-known PINK LADY brand of apples reminds us, imprecisely drafted licence agreements may come back to haunt unsuspecting licensors. How do you like … Continue reading

Important benefits for Canadian trademark registrations

While Canadian trademark owners can enforce their rights without obtaining a registration, there are a number of significant advantages to registering a trademark in Canada, including: The Right to the Exclusive Use of the Mark in Canada. Section 19 of the Trademarks Act gives the owner of a registered trademark the exclusive right to use … Continue reading

What’s in a name? How to protect yourself if your name is your personal brand

Cher, Prince, Oprah, Bono – all of these celebrities have one thing in common – the capacity to be recognised by nothing more than a single name. For businesses which are built on the success of a personal brand, a name can be a crucial component of being recognised by consumers. But the question remains: should … Continue reading

Productivity Commission’s Report on Australia’s IP system

The Inquiry Report into Intellectual Property Arrangements recently published by the Productivity Commission (Report) argues that Australia’s IP system is weighted too heavily in favour of rights holders and against the interests of the broader community. It has made various recommendations to correct this perceived imbalance. This article considers some of the recommended changes which, … Continue reading

Protecting Australian brands in China

Summary China continues to emerge as one of the most important intellectual property (IP) destinations for Australians, having overtaken the US and New Zealand as Australia’s predominant destination market for Australian trade marks filed overseas in 2011. With the China-Australia Free Trade Agreement (ChAFTA) coming into force last year, China is now Australia’s largest trading … Continue reading

Use them or lose them: US trademarks put to the proof

In the United States, a trademark owner must use their mark in commerce to maintain a federal trademark registration. This requirement is different from many other countries which do not require use of the mark to maintain registration.  Further, the trademark owner is required periodically to prove to the United States Patent and Trademark Office … Continue reading

U.S. Trademark fees increase on January 14

On January 14, 2017, the U.S. Patent & Trademark Office (USPTO) will implement a number of fee increases for trademark applications and other trademark filings. A full schedule of the fee changes is available on the USPTO’s website. As we previously reported, the USPTO proposed most of these fee changes last summer with a period … Continue reading

Trade-mark registration not all singing and all dancing

In Domaines Pinnacle Inc. v. Constellation Brands Inc. 2016 FCA 302, the Canadian Federal Court of Appeal has distinguished its own recent decision in Les Restaurants La Pizzaiolle Inc. v. Pizzaiolo Restaurants Inc., (Pizzaiolo) 2016 FCA 265 (see IP Monitor of November 2016.) Both cases dealt with the extent to which Canada’s Trademark Opposition Board … Continue reading

Update: INTA files amicus brief with SCOTUS in Slants case

On December 16, 2016, the International Trademark Association (“INTA”) filed an amicus brief with the U.S. Supreme Court in support of Simon Tam, founder of the Slants. Lee v. Tam, No. 15-1293, Br. Of Amicus Curiae Int’l Trademark Assoc. INTA—a global association comprising more than 7,000 trademark owners and legal practitioners—urged the Court to uphold … Continue reading
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