Topic: Trademark

Willfulness not required for profits awards in trademark infringement suits

By Tim Kenny (US), Felicia Boyd (US) and Joy Wang (US) on April 24, 2020 Posted in Trademark

A trademark infringement suit is not required to show willful infringement as a precondition to a disgorgement of the infringers’ profits.… Continue reading

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

By Justin Davidson (HK) and Phoebe Poon (HK) on April 17, 2020 Posted in Counterfeiting, General, Trademark

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

Federal Court of Canada Extends Suspension Period to May 15, 2020

By Mark Edward Davis (CA) on April 6, 2020 Posted in Copyright, General, Patents, Trademark

By Updated Practice Direction and Order dated April 4, 2020, the Federal Court has further extended the Suspension Period to May 15, 2020. It has simultaneously mapped out a strategy to keep the Court running as efficiently as possible under the circumstances. During the Suspension Period (which began March 16, 2020 and currently runs until May … Continue reading

Canadian Federal Court of Appeal Extends Suspension of Hearings to May 15, 2020

By Mark Edward Davis (CA) on April 3, 2020 Posted in Copyright, General, Patents, Trademark

In a Notice to the Parties and the Profession issued April 2, 2020, the Federal Court of Appeal has confirmed that the suspension period implemented on March 16, 2020 will be extended to Friday, May 15, 2020. All matters scheduled to be heard during this Suspension Period are adjourned. The business of the Court will … Continue reading

Trademarks, Internet sales, and personal jurisdiction

By Susan Ross (US) and Tim Kenny (US) on March 31, 2020 Posted in Trademark

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

By Catherine Daigle (CA) and Mark Edward Davis (CA) on March 29, 2020 Posted in Copyright, General, Trademark

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

By Bianca Pietracupa (CA), Elizabeth Williams (CA) and Amy Grenon (CA) on March 23, 2020 Posted in Advertising, General, Trademark

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

Response from Canadian Courts to COVID-19

By Madeleine Hodgson (CA), Renaud Garon Gendron, Mat Brechtel (CA) and Mark Edward Davis (CA) on March 21, 2020 Posted in Copyright, General, Patents, Trademark

Please see our updated version of this article, published July 10, 2020. We know you have a lot to think about and plan right now and over the next few weeks. You can rely on us to keep your intellectual property litigation matters moving forward. To that end, we wanted to provide an update on … Continue reading

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

By Mihaela Dumitrean, Catherine Daigle (CA) and Mat Brechtel (CA) on March 21, 2020 Posted in Copyright, General, Patents, Trademark

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?

By Frances Drummond (AU) and Isobel Taylor (AU) on February 26, 2020 Posted in Trademark

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

USPTO adopts new communication and electronic filing requirements

By Alicia Groos (US) and Stephanie Schmidt (US) on February 13, 2020 Posted in Trademark

The U.S. Patent and Trademark Office (USPTO) has published a new Examination Guide, enacting certain requirements that will go into effect this Saturday, February 15, 2020. Among the new requirements are two important changes. Most significantly, the USPTO will now require all new applications to list an email address for the applicant, even where the … Continue reading

My oh my Myanmar!

By Georgina Hey (AU) and Matt Allen (AU) on February 5, 2020 Posted in Trademark

The Myanmar government has recently flagged its intention to implement new trade mark laws commencing mid-2020. This is good news for global brand owners hoping for Myanmar’s laws to be better aligned to international trade mark standards. However, brand owners must take positive steps to ensure that their trade marks remain protected under the new … Continue reading

Brexit draws closer but no change to EU trade mark regime, for now

By Abida Chaudri and Mike Knapper (UK) on January 30, 2020 Posted in Trademark

The UK’s Withdrawal Agreement Bill has passed in both the House of Commons and the House of Lords, received Royal Assent from the Queen, and been ratified by the European Parliament, paving the way for Brexit to take place on 31 January 2020. Crucially, the spectre of no deal has been averted and there will … Continue reading

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