Topic: Trademark

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Bacardi Must ‘Gin and Beer It’ In Failed Trade Mark Opposition Proceeding

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

The Quebec Superior Court declines to issue a Norwich order to identify the supplier of grey market perfumes

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

Grey Goods and False Labels: Federal Court Grants Interlocutory Injunction in a Trademark Case

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

Manufacturing in China? Chinese courts confirm the benefits of seeking local registered protection

Putting aside some recent COVID-related bumps in the road, China remains the world’s largest manufacturer. A large portion of its manufacturing consists of original equipment manufacturing (OEM) under contract. OEM involves manufacturing goods intended for export only, and not for sale domestically in China. This business model has solidified China as a critical manufacturing hub … Continue reading

Goodwill Hunting: Herbs R Us depreciates the goodwill of Toys R Us

Trademark owners often face challenges when attempting to enforce against non-confusing third party trademark use, for example, where someone has adopted a “parody” mark, where the mark may be similar trademark, or have the same ‘look and feel’, but in a completely different consumer space such that consumer confusion is unlikely. But where such mark … Continue reading

July Update – Response from Canadian Courts to COVID-19

Canadian jurisdictions continue to relax social distancing measures and take steps towards resuming operations while maintaining safe practices. This post provides an update on the status of the courts across Canada. We will continue to provide updates as matters progress. Please feel free to reach out to our litigation team with any questions you may … Continue reading

A Generic Word Combined With “.Com” Can Create A Protectable Trademark

In United States Patent And Trademark Office, Et Al., v. Booking.Com B. V. (No. 19-46, Jun. 30, 2020), the Supreme Court held that the combination of a generic term with “.com”—referred to as a “generic.com term”–could be a protectable trademark. Booking.com, an enterprise that maintains a travel-reservation website by the same name, sought federal registration … Continue reading

Implementation of the Madrid Protocol in Hong Kong

On 19 June 2020 Hong Kong gazetted the Trade Marks (Amendment) Ordinance, paving the way for the application of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) in Hong Kong.  This follows on from the outcome of a public consultation conducted back in 2014. Currently, there are 106 … Continue reading

A smooth [not crunchy] win in Bega’s favour  

The facts of the 2019 Federal Court decision in Kraft Foods Group Brands LLC v Bega Cheese Limited were far from simple.  The case centred around a battle between Kraft and Bega, involving considerations of ownership and divestment of rights in trade dress and goodwill and internal and external trade mark licensing structures. Ultimately, the … Continue reading

USPTO Expedited Initial Examination for COVID-19-Related Trademark Applications

On June 15, 2020, the U.S. Patent and Trademark Office (“USPTO”) announced a new program, effective June 16, 2020, to help expedite the initial examination of U.S. trademark applications for marks relating to qualifying COVID-19 medical goods or services. The USPTO typically examines trademark applications in the order they are filed, with most applicants receiving … Continue reading

Canada’s Trademark Overhaul – 1 year out

On June 17, 2019, Canada’s trademark regime went through the most significant changes in over 50 years.  Where have we landed, a year after the new provisions came into force? One thing seems certain: Canada’s Trademark Examiners are loving the new “non-distinctive” objection.   It has become the objection du jour, and sometimes appears to be … Continue reading

Insights from the Australian Intellectual Property Report 2020

Intellectual Property (IP) Australia published their 2020 edition of the Australian IP Report (the IP Report) on 24 April 2020. The IP Report, which can be accessed here, provides a current overview of the IP sector in Australia and the latest data on the IP rights (IPR) administered by IP Australia. Reports such as the … Continue reading

Singapore leads the way on promoting its IP Hub

The Intellectual Property Office of Singapore (IPOS) made headlines recently when its Chief Executive, Daren Tang, was appointed as the next Director-General of the World Intellectual Property Organisation with effect from 1 October 2020 (see this link for more information). As Chief Executive of IPOS since November 2015, Daren has earned accolades for several initiatives … Continue reading

Could the use of Punitive Damages be the way forward in China?

In September 2019, the Shanghai Pudong District People’s Court awarded triple punitive damages to Balanced Body Inc., which according to the Shanghai government news report was the first such award for a Shanghai Court to a foreign plaintiff. Background Balanced Body is a provider of Pilates equipment and education and holds PRC trade mark registrations … Continue reading

Trademarks, Internet sales, and personal jurisdiction

On February 10, 2020, the Seventh Circuit federal appeals court ruled that an Illinois-based seller of dietary supplements could maintain a federal Lanham Act and Illinois state law claims against a California-based competitor that had only an online presence, and no physical presence in Illinois. (Curry v. Revolution Laboratories, LLC, 949 F,3d 385 (7th Cir. … Continue reading

UPDATE: Canadian Intellectual Property Office further extends all deadlines to May 1st

In response to the continuing disruption caused by the COVID-19 outbreak,  the Canadian Intellectual Property Office (CIPO) has announced on March 27, 2020 a further extension for filing deadlines  – all deadlines ending in the month of April 2020 will automatically be extended to May 1, 2020. Parties in proceedings before the Trademarks Opposition Board should … Continue reading

Online Brand Management: Avoiding Toxic Social Influencers

Online brand protection must be taken into consideration, particularly when faced with changing consumer behavior, market uncertainty and rampant misinformation. Social influencers with large audiences that value their opinions on consumer products and health regimes are a valuable tool for companies and governments looking to reach large online communities quickly. However, some influencers have been … Continue reading

UPDATE ON COVID-19 : CIPO announces extensions in wake of outbreak in Canada

Given the many challenges faced by all businesses in dealing with the COVID-19 outbreak, the Canadian Intellectual Property Office (CIPO) has advised that it will relax filing deadlines for the remainder of March 2020.  This decision was first announced on March 16, 2020 and further updated yesterday, March 19, 2020. What you need to know All … Continue reading

Stranger than Sci-Fi Part 2: Should Artificial Intelligence machines be recognised as owners of IP?

IP legislation often finds itself struggling to plug gaps in the law caused by the rapid pace of technological change, and the state of the law surrounding ownership of AI-generated products is no different. In the first article of this series, we considered how current Australian patent and copyright law frameworks would deal with questions … Continue reading
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