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 a judgment of 17 September 2021, the Paris Court of Appeal has ruled in favour of the validity of the semi-figurative trademark a descriptive verbal element . The Judges highlighted in particular that, although the expression “vente privée” is a generic and usual designation of the services provided, the addition of a pink butterfly … Continue reading
It is well-established that a shape or colour alone can function as a trade mark, that is, a badge of origin indicating to consumers the source of the relevant goods or services. However, in practice, achieving the level of ubiquity required to be granted such a trade mark registration can be difficult.[1] It is also … Continue reading
This week the Federal Circuit rejected a constitutional challenge to the Secretary of Commerce’s appointment of administrative judges to the Trademark Trial and Appeal Board (“TTAB”) at the U.S. Patent and Trademark Office (“USPTO”). The decision comes on the heels of the Supreme Court’s decision in June in Arthrex v. Smith & Nephew, which stated … 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
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
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
Over the course of the last year Zoom became one of the most frequently used words. Due to its popularity, Zoom has been used as an adjective (“I’m hosting a Zoom trivia night”), a verb (“I’m Zooming”) and a noun (“I have a 9 am Zoom”). In the more recent months of the pandemic, expressions … 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
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
A recent decision of the Federal Court, Brandstorm, Inc. v Naturally Splendid Enterprises Ltd., 2021 FC 73, has confirmed that where “sufficiently substantial and significant” evidence is presented on review, the appeal of a decision of the Registrar of Trademarks (the Registrar) pursuant to section 56(5) of the Trademarks Act (the “Act”) can be done … Continue reading
The delays in Canadian trademark examination are becoming excruciating. The Trademarks Act and the Trademark Regulations provisions do not expressly provide for expedited examination of a Canadian trademark application. The long-standing practice of the Canadian Intellectual Property Office (“CIPO”) was to refuse requests for the expedited examination. Section 2.2 of the Trademark Examination Manual, the … 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
Last week, in Parsons Inc. v Khan, 2021 FC 57, the Federal Court found the owner of a phishing website liable for passing itself off as the Applicants’, Parsons Corporation and Parsons Inc. (“Parsons”). Parsons, a multinational engineering and construction firm with a Canadian subsidiary, has applied-for and used, but not yet registered, the PARSONS … Continue reading
Inherent distinctiveness is a measure of a trademark’s originality – those elements that make a brand unique and recognizable to the public. Trademarks indicate the source of goods or services for consumers. As such, distinctiveness is said to be the “essence of a protectable trademark and the foundation of trademark law”[1]. Canada Now Examines for … Continue reading
For the first time ever, Canada’s Trademark Opposition Board (TMOB) has held that a ‘depreciation of goodwill’ claim can serve as a valid ground of opposition in trademark opposition proceedings. In doing so, the TMOB has arguably continued the recent trend in Canadian trademark jurisprudence of expanding the application of the depreciation of goodwill remedy … Continue reading
In a last minute effort to avoid a government shutdown, on December 21, 2020 Congress passed the Consolidated Appropriations Act, 2021.… Continue reading
On October 15, 2020, the European Union Intellectual Property Network (EUIPN) has published its Common Practice No. 8 (CP8) about the ‘Use of a trade mark in a form differing from the one registered’. The CP8 provides guidelines and practical examples for users about the common standards to be applied by the EU Trademark Office … Continue reading
In Miller Thomson LLP v Hilton Worldwide Holding LLP, 2020 FCA 134, the Canadian Federal Court of Appeal recently confirmed that a trademark associated with “hotel services” was valid despite no brick-and-mortar presence in Canada. More specifically, the Court acknowledged that providing incidental or ancillary services to the registered service can be considered to be … Continue reading
For many people the word “BOSS” on a piece of clothing evokes the German luxury fashion house Hugo Boss. (Employers usually don’t need to affix a BOSS mark on their clothes to signal their position.) Yet for some, especially in Merseyside in the northwest of England, “BOSS” is also just a slang term used to … Continue reading
The decision of Bacardi & Company Limited v Dickinson Distribution Group Pty Ltd [2020] ATMO 117 (1 July 2020) confirms the acceptance of the similarity between goods in classes 32 and 33, and in particular accepts that gin is similar to beer. Hence, it is vitally important for owners of marks registered in classes 32 … Continue reading
In a recent judgment, the Quebec Superior Court denied a request for an order against a wholesaler/retailer to identify the suppliers of branded products obtained via parallel importation and sold in Quebec without the brand owner’s authorization. The brand owner sought the information in order to sue the products’ suppliers. Coty Inc., a manufacturer of … Continue reading
Further to the award of punitive damages to Balanced Body (revisit our blog post here), we have seen a string of cases in the first half of 2020 where Chinese judges awarded punitive damages to trade mark owners for trade mark infringement. Guangzhou Redsun was awarded 50 Million RMB against its ex-employee Guangzhou Redsun has … Continue reading
In a recent trademark passing off case, TFI Foods Ltd. et al. v. Every Green International Inc., 2020 FC 808, the Canadian Federal Court granted an interlocutory injunction prohibiting the defendant from selling grey goods in Canada. Specifically, the defendant was enjoined from using labels falsely identifying it as the exclusive manufacturer of certain imported … Continue reading