Topic: Trademark

China update: Good news (with a warning) for brand owners outsourcing the manufacturing of their products in China

By Georgina Hey (AU) on January 23, 2020 Posted in Trademark

Global trade is currently a clear focus between nations around the world, and we are seeing trade agreement negotiations effecting world economies in an increasingly direct fashion. As IP specialists, we are always alive to the legal developments that fall out of these negotiations, particularly how they impact domestic laws in relation to balancing the … Continue reading

Are IP Australia costs awards set to finally reflect costs incurred? Proposed changes to trade mark hearing cost awards

By Rebecca Brenikov (AU) and Frances Drummond (AU) on January 16, 2020 Posted in Trademark

In December 2019, after much anticipation, IP Australia released a draft of proposed amendments to the costs that may be awarded in relation to trade marks proceedings heard before IP Australia. IP Australia comments that these changes should ensure awards more accurately reflect the actual costs incurred by parties and are based on Federal Court … Continue reading

Focus on the reform of French trademark law following the transposition of the “Trademark Package”

By Clément Monnet and Nilofar Moini Shabestari (FR) on January 9, 2020 Posted in Trademark

Order n°2019-1169 of 13 November 2019 on goods and services marks, its implementing decree n°2019-1316 of 9 December 2019 and the Minister of the Economy and Finance and the Minister of Public Accounts decision of the same date on procedural fees of the French national institute of industrial property (INPI, the acronym for the original … Continue reading

Update for Australian businesses: China continues its trade mark law refresh

By Georgina Hey (AU) on December 18, 2019 Posted in Trademark

For many years China has made deliberate attempts to model itself as a strong intellectual property (IP) economy. The Chinese IP system continues to evolve, and, most recently, changes coming into effect on 1 November 2019 have been made to improve the strength of the Chinese trade mark system. The changes are aimed at bad … Continue reading

The perilous legal protection of the shape of product

By Clément Monnet and Nilofar Moini Shabestari (FR) on December 3, 2019 Posted in Trademark

In its decision dated 24 October 2019 (Case T601/17, Rubik’s Brand/EUIPO – Simba Toys), the General Court of the European Union has confirmed the invalidity of the European Union’s three-dimensional trade mark “Rubik’s Cube”, which consists of the shape of the famous puzzle. The launch of a new product generally involves heavy investments (including marketing) … Continue reading

It’s all kicking off: AG gives opinion in Sky v SkyKick CJEU reference

By Farah Mukaddam (UK) on November 28, 2019 Posted in Trademark

In one of the most – if not the most – hotly anticipated and significant trade mark cases of the year, the EU Advocate General, Evgeni Tanchev, on 16 October 2019, handed down his Opinion in the Sky v Skykick case, following a reference by the English High Court to the Court of Justice of the European Union (CJEU). … Continue reading

Authorised use or something fishy? – Implications for trade mark ‘use’ in Australia in the inter-company context

By Georgina Hey (AU) and Matt Allen (AU) on November 27, 2019 Posted in Trademark

Trade mark licensing arrangements can often offer significant benefits for trade mark owners by increasing brand exposure and royalty revenue streams. However, as we have previously reported, recent Australian cases (such as Lodestar Anstalt v Campari America LLC [2016] FCAFC 92 (Lodestar)) demonstrated that licensing arrangements may expose trade mark owners to the risk of … Continue reading

Liverpool FC’s trademark proposal receives a red-card from the UK Intellectual Property Office

By Sally Hughes (UK) and Sophy Lelliott (UK) on October 30, 2019 Posted in Trademark

Liverpool FC may be making good progress this season, however, off the pitch they have suffered a defeat in a controversial attempt to trademark the word ‘LIVERPOOL’.… Continue reading

No damages without invalidation ab initio – a look at Wenger SA v Travelway Group International Inc

By Bianca Pietracupa (CA) on October 8, 2019 Posted in Trademark

A valid trademark registration is an absolute defence to claims of passing off where there is no significant difference between the impugned mark as registered and the mark being used.[i] This is because a trademark registration gives the trademark owner the exclusive right to use that trademark throughout Canada.[ii] A party claiming passing off against … Continue reading

Appoint your Canadian Trademark Agent for Peace of Mind for Madrid applications

By Mihaela Dumitrean on August 23, 2019 Posted in Trademark

On June 17, 2019 Canada acceded to the Madrid Protocol. Foreign applicants can now file a single International trademark application with the International Bureau of World Intellectual Property Organization (WIPO) and request trademark protection in Canada. Generally, the Canadian Intellectual Property Office (CIPO) will issue a Courtesy Letter advising the applicant’s representative before the International Bureau of WIPO that in Canada … Continue reading

Confusion: More than just the sum of its parts

By Bianca Pietracupa (CA) on August 6, 2019 Posted in Trademark

In claims for trademark infringement and passing off, plaintiff success is determined by the ability to establish confusion. Section 6 of the Trade-marks Act (the Act) provides a non-exhaustive list of elements to be considered by the court, namely inherent distinctiveness, length of time, nature of the goods, services or business, nature of the trade … Continue reading

The highs and lows of the 2019 Australian IP Report

By Georgina Hey (AU) and Benjamin Kende on July 15, 2019 Posted in Trademark

The highs and lows of the 2019 Australian IP Report To mark World Intellectual Property Day, IP Australia released its seventh edition of the Australian Intellectual Property Report 2019 (Report). The Report provides a snapshot of the Australian IP landscape in 2018 by consolidating data, highlighting trends and critically analysing its future. In this article, … Continue reading

Is this really the end of the three-stripe trade mark ?

By Clément Monnet on July 12, 2019 Posted in Trademark

In its decision dated 19 June 2019 (Case T-307/17), the General Court of the European Union has confirmed the invalidity of Adidas’ European Union trade mark, which consists of three parallel equidistant parallel stripes of identical width applied on a product in any direction. Adidas, a world-renowned German company specializing in the manufacture and marketing … Continue reading

U.S. Supreme Court and “Scandalous” Trademarks

By Andrea Shannon (US) on June 24, 2019 Posted in Trademark

Two years after the United States Supreme Court struck down the ban on disparaging trademarks, the Supreme Court has now struck down the Lanham Act’s similar ban on the registration of scandalous and immoral trademarks at the U.S. Patent and Trademark Office. Iancu v. Brunetti, No. 18-302, 588 U.S. _____ (2019). On June 24, 2019, … Continue reading

Unauthorized invoices – Canadian trademark owners beware

By Mark Edward Davis (CA) on June 22, 2019 Posted in Trademark

Canadians trademark owners are being targeted with misleading fee and renewal notices. As discussed previously, this is not a new phenomenon, but is one we are seeing with increasing incidence. These seemingly official invoices have caused some to pay exorbitant fees to private companies in the mistaken belief that they are paying fees required by the Canadian Intellectual Property Office (CIPO).… Continue reading

Enforcing Foreign Trademark Decisions in Canada

By Mark Edward Davis (CA) on June 19, 2019 Posted in General, Trademark

Foreign judgments in trademark cases are enforceable in Canada. The recent decision of Justice Perell in Dead End Survival, LLC v. Marhasin provides a succinct roadmap for doing so. The Court had no trouble enforcing a judgment from the US District Court which included both monetary and non-monetary relief: Dead End Survival’s judgment was for … Continue reading

Supreme Court settles trademark Circuit split

By Susan Ross (US) and Joy Wang (US) on May 23, 2019 Posted in Trademark

On May 20, 2019, the US Supreme Court ruled that a licensor’s rejection of a trademark license in bankruptcy does not terminate the licensee’s right to continue using the licensed mark. Mission Product Holdings Inc. v. Tempnology LLC, 587 US __ (2019). The decision brings trademarks into alignment with how patents and copyrights are already … Continue reading

Amendment to Chinese Trade Mark Law on bad faith trade mark applications with no intention to use

By Justin Davidson (HK) and Phoebe Poon (HK) on May 15, 2019 Posted in Trademark

Complaints regarding the growth of bad faith trade mark applications in China have been raised for a while now. The existing Trade Mark Law in China does not readily imply bad faith on trade mark applicants with no genuine intention to use. On 23 April 2019, the Standing Committee of the National People’s Congress passed … Continue reading

It’s NUT yours, it’s mine: Kraft Foods v Bega Cheese and the importance of intellectual property due diligence

By Rebecca Brenikov (AU) and Frances Drummond (AU) on May 13, 2019 Posted in Trademark

It’s the peanut butter packaging debate that has recently captured the hearts and minds of the Australian public. Whether you were confused or not, the Court’s decision (found here) highlights the need for thorough IP due diligence whether you are purchasing or selling a company, and reiterates the importance of understanding the assets being dealt … Continue reading

How a chatbot helps you prepare for the Trade-marks Act

By Lorelei Graham (CA) and Michelle Fernando (CA) on May 8, 2019 Posted in Trademark

Sweeping changes to the Canadian Trade-marks Act will finally be implemented putting Canadian brand owners on equal footing with the rest of the world. Taking effect on June 17, 2019, the changes will allow for the consistent classification of a brand owner’s goods and services as Canada will finally adopt this process under the Nice … Continue reading

Canadian Trademark Oppositions – Put your best foot forward

By Mark Edward Davis (CA) on April 21, 2019 Posted in Trademark

Before a Canadian trademark is registered, it must be advertised and exposed to third-party opposition before the Canadian Trademarks Opposition Board (“TMOB”). Procedural complexity has triggered criticism of Canadian trademark opposition proceedings as formalistic. For example, appeals from the TMOB to the Federal Court are available as of right and it has always been a peculiar feature of … Continue reading

Venezuela and US trademark owners

By Susan Ross (US) on March 28, 2019 Posted in Trademark

US owners of patents and trademarks who have registered them in Venezuela find themselves in the unusual position of being prohibited by the US government from paying Venezuela any required fees in the Venezuelan cryptocurrency, the Petro. For more information, please read our Legal Update.… Continue reading

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

By Frances Drummond (AU), Alyson Poole (AU), Sophie Lees (AU) and Rebecca Brenikov (AU) on March 18, 2019 Posted in Trademark

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