Topic: Trademark

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Ok Google, Hey Siri, Hi Alexa – have you renewed my trade mark yet?

With the ever increasing ubiquity of technologies improving everyday tasks in personal life, it is little wonder that such technologies are also offering efficiencies and advantages in the work context.  Phrases such as process automation, data mining, machine learning and actionable intelligence are no longer far-out themes, but instead are being used regularly (and with … Continue reading

Brexit: EU trade mark renewals in event of no-deal

In our recent post (click here to access), we confirmed that for EU trade marks which are registered at the withdrawal date, either 29 March 2019 (no-deal scenario) or 31 December 2020 (deal scenario), new UK national rights will be cloned onto the UK register, automatically, without charge and retaining all relevant dates. The new … Continue reading

Good to know: The US trademark office has a ‘proof of use’ audit program for trademark registrations

The US Patent and Trademark Office (USPTO) requires trademark owners to support their trademark registrations by providing one specimen of use per class, at both 6 years and 10 years after the trademark registration date. So, for instance, if you have a registration covering ‘clothing, footwear and headgear’ in class 25, providing the US trademark … Continue reading

Canada: Further trademark amendments are here — Bill C-86 is given Royal Assent

Canada’s core IP statutes have been amended by Bill C-86, which received Royal Assent as the Budget Implementation Act, 2018, No. 2, SC 2018, c 27 on December 14, 2018. The final version of the legislation includes amendments to the Trade-marks Act that are substantially identical to the version that received first reading on October … Continue reading

Do not be fooled — Misleading solicitations regarding your trademarks

Misleading trademark solicitations are becoming an epidemic. Trademark owners beware! If you have registered a U.S. federal trademark, you may know that you must periodically make certain filings to maintain or renew your registration. For most post-registration maintenance filings, there is a one-year window in which to make the filing and a six-month grace period … Continue reading

Are tougher days coming for approval of agribusiness certification trademarks in Australia?

On 22 November 2018 the Australian Competition and Consumer Commission (ACCC) issued its initial assessment of the rules governing use of four certification trade marks in the name of OxoPak Pty Ltd, indicating its intention deny approval for the certification rules, and therefore the trade marks will be denied.… Continue reading

Australian Trademarks Law Review – Edition 2

2018 marked the publication of the first Australian Trademarks Law Review from the Law Review series. The Law Review collates cross-border legal insights and analysis across a range of practice areas and is a useful resource for in-house counsel of global organizations. Following the publishing of the first edition of the Australian chapter of 2018 … Continue reading

Cryptocurrency and trademarks – a lesson in jurisdiction

On October 22, 2018, a federal trial court in Manhattan granted web services conglomerate Alibaba Group Holding Limited’s request for a preliminary injunction against several defendants that were offering cryptocurrency for sale, under the name “AlibabaCoin.” (Alibaba Group Holding Ltd. v. Alibabacoin Foundation, No. 18-CV-2897 (JPO) (S.D.N.Y. Oct. 22, 2018) Although neither Alibaba nor any … Continue reading

Bill C-86 — significant changes to Canada’s IP regime

The federal government’s recent omnibus budget bill, Bill C-86 tabled October 29th, 2018, proposes significant changes to Canada’s IP laws. Division 7 of the Bill is intended to implement many aspects of the government’s IP strategy announced in April 2018, and targets the Patent Act, the Trade-marks Act, and Copyright Act; provides for a new … Continue reading

USPTO warns of unauthorized changes to trademark files

On October 19, 2018, the U.S. Patent and Trademark Office (PTO) posted a general warning on its website that unauthorized changes have been made to “a number” of active trademark applications and registrations. The PTO indicated that the unauthorized changes affect “a small percentage of total applications and registrations.” What can you do? If you … Continue reading

Canadian Anti-counterfeiting under the USMCA – what you see? We (mostly) already got it

The USMCA – aka NAFTA 2.0 – has a Chapter devoted to intellectual property, which has been the subject much consideration and debate since release of the text on October 1, 2018.  With some commentators lamenting that Canada “caved” to US demands and predicting that the IP provisions of the USMCA will stifle Canada’s innovation … Continue reading

Amended Australian IP laws receive Royal Assent with little fanfare

On 24 August 2018, the creatively named Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2018 quietly received Royal Assent, with some parts of the new Act entering into force the following day. As the name indicates, the primary focus of the new legislation is to implement the recommendations made … Continue reading

V Energy loses a mother of a battle over color trademark: Australia court’s decision in Frucor v Coca-Cola

We, as consumers, regularly associate colours with our favourite brands as we stroll down supermarket aisles and peer at billboards and banners in shopping centres.  But for brand holders, gaining protection for proprietary colours is not a walk in the (green) park.  The recent decision of Frucor Beverages Limited v The Coca-Cola Company [2018] FCA … Continue reading

Trademarks, social media and lessons learned

On June 14, 2018, a federal trial court in New York issued a decision relating to a restaurant owner’s claim that the restaurant manager was using the owner’s trademarks on social media in violation of the federal trademark law known as the Lanham Act. The trial court denied the owner’s claim, in a ruling that … Continue reading

Mirror, mirror on the wall, what’s my taxable Insta value after all?

In sad news for celebrities and Instagram influencers across Australia, the introduction of the so-called ‘fame tax’ as part of a raft of integrity measures announced in the 2018/19 budget means that they could end up paying higher taxes on the income and non-cash benefits earned through the commercial exploitation of their image rights. In … Continue reading

Threat or hope for Louboutin’s iconic red sole trade mark? AG Szpunar opines that a mark’s ‘reputation’ should not be confused with ‘substantial value’

The trade mark consists of “the colour red (Pantone 18 1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark”) Following a reference from The Netherlands (District Court of The Hague) considering the … Continue reading
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