Topic: Trademark

Getting Ready for Change – Nice Classification Comes to Canada

By Catherine Daigle (CA) on November 7, 2017 Posted in Trademark

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

By Georgina Hey (AU) and Isobel Taylor (AU) on October 31, 2017 Posted in Trademark

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

By Georgina Hey (AU) and Rebecca Brenikov (AU) on October 17, 2017 Posted in Advertising, Trademark

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

By Jordana Sanft (CA) on September 19, 2017 Posted in Copyright, Trademark

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

By Georgina Hey (AU) and Isobel Taylor (AU) on September 14, 2017 Posted in Copyright, Trademark

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

“Certified” quality doesn’t prevent EU trademarks from cancellation

By Manuel Merling (DE) on September 12, 2017 Posted in Trademark

Recently the ECJ decided about the requirement of right-prevailing/genuine use of trademarks registered by legal entities or associations licensing its trademarks to ensure that certain quality standards are met.… Continue reading

Extending Brand Protection to Canada

By Mark Edward Davis (CA) on August 25, 2017 Posted in Trademark

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

By Mark Edward Davis (CA) on August 14, 2017 Posted in Trademark

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

By Catherine Daigle (CA) on July 25, 2017 Posted in Trademark

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

By Andrea Shannon (US), Saul Perloff (US) and Andre Hanson (US) on June 20, 2017 Posted in Trademark

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

Accept no substitutes – Assignment will not cure defective trade mark filing

By Helen Macpherson (AU) on June 14, 2017 Posted in Trademark

The Full Court of the Federal Court has issued a significant decision in relation to trade mark ownership, which reconfirms the position in relation to the assignment of trade mark applications which have been filed in incorrect applicant names. The decision in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 … Continue reading

Maximise your IP to enhance franchise value

By Georgina Hey (AU) and Laura Simonds (AU) on May 18, 2017 Posted in Copyright, Trademark

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?

By Frances Drummond (AU) on May 18, 2017 Posted in Trademark

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

By Mark Edward Davis (CA) and Amy Grenon (CA) on April 26, 2017 Posted in Trademark

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

By Alyson Poole (AU) and Isobel Taylor (AU) on March 22, 2017 Posted in Advertising, Trademark

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

By Georgina Hey (AU) on March 7, 2017 Posted in Advertising, Trademark

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

By Georgina Hey (AU) on March 6, 2017 Posted in Trademark

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

One ¡Tequila! Two ¡Tequila!

By Christopher Weimer (US) and Chandler Stephens (US) on March 3, 2017 Posted in Trademark

One distilled agave drink . . . Two distilled agave drink. . . Three distilled agave drink. . . Sometimes only Tequila will do the trick. But how do you know if what’s in your shot glass is the real thing? Fear not, the Trademark Trial and Appeal Board is here to help. The TTAB … Continue reading

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

By Chandler Stephens (US) and Alicia Groos (US) on February 9, 2017 Posted in Trademark

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

Settlement restricting Grey Marketing not an unreasonable restraint of trade

By Brian Gray (CA) on January 5, 2017 Posted in Trademark

In Mars Canada Inc. v. Bemco Cash & Carry Inc., 2016 ONSC 7201 (November 18, 2016), the Ontario Superior Court of Justice has granted Mars Canada Inc (“Mars”) summary judgment. Mars the well-known maker of inter alia, candy bars moved for a declaration that the defendants were in breach of their settlement agreement not to … Continue reading

U.S. Trademark fees increase on January 14

By Andrea Shannon (US) on January 4, 2017 Posted in Trademark

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

By Brian Gray (CA) on January 4, 2017 Posted in Trademark

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

By Andrea Shannon (US) and Saul Perloff (US) on December 21, 2016 Posted in Trademark

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

Don’t be a Turkey! – Lessons learnt for trade mark owners as the Wild case concludes

By Alyson Poole (AU) on December 8, 2016 Posted in Trademark

A recent High Court of Australia (HCA) decision has marked the finale of the dispute between Lodestar Anstalt (Wild Geese Whiskey) and Campari America LLC (Wild Turkey Bourbon), with the HCA refusing to grant Wild Turkey Bourbon leave to appeal the 2016 decision of the Full Federal Court of Australia. For full background on the … Continue reading