Tag archives: intellectual property

Brexit: trademarks and designs

Clare Jackman (UK)By Clare Jackman (UK) on Posted in General
It won’t be news to you that there is still a great deal of uncertainty around Brexit and, with the March 29, 2019 looming, we do not yet know if the UK will exit in an orderly fashion (with a deal and with a transition period), obtain an extension of the negotiating period with a view to agreeing terms, crash out without a deal or, reverse the process altogether.… Continue reading

Good to know: The US trademark office has a ‘proof of use’ audit program for trademark registrations

Georgina Hey (AU)Rebecca Brenikov (AU)By Georgina Hey (AU) and Rebecca Brenikov (AU) on Posted in Trademark
The US Patent and Trademark Office (USPTO) requires trademark owners to support their trademark registrations by providing one specimen of use per class, at both 6 years and 10 years after the trademark registration date. So, for instance, if you have a registration covering ‘clothing, footwear and headgear’ in class 25, providing the US trademark … Continue reading

Canada: Further trademark amendments are here — Bill C-86 is given Royal Assent

Amy Grenon (CA)By Amy Grenon (CA) on Posted in Copyright, Trademark
Canada’s core IP statutes have been amended by Bill C-86, which received Royal Assent as the Budget Implementation Act, 2018, No. 2, SC 2018, c 27 on December 14, 2018. The final version of the legislation includes amendments to the Trade-marks Act that are substantially identical to the version that received first reading on October … Continue reading

Are tougher days coming for approval of agribusiness certification trademarks in Australia?

Georgina Hey (AU)Amanda Caldwell (AU)By Georgina Hey (AU) and Amanda Caldwell (AU) on Posted in Advertising, Trademark
On 22 November 2018 the Australian Competition and Consumer Commission (ACCC) issued its initial assessment of the rules governing use of four certification trade marks in the name of OxoPak Pty Ltd, indicating its intention deny approval for the certification rules, and therefore the trade marks will be denied.… Continue reading

Australian Trademarks Law Review – Edition 2

Frances Drummond (AU)Sophie Lees (AU)Isobel Taylor (AU)By Frances Drummond (AU), Sophie Lees (AU) and Isobel Taylor (AU) on Posted in Trademark
2018 marked the publication of the first Australian Trademarks Law Review from the Law Review series. The Law Review collates cross-border legal insights and analysis across a range of practice areas and is a useful resource for in-house counsel of global organizations. Following the publishing of the first edition of the Australian chapter of 2018 … Continue reading

Recent developments for IPR protection in China

Justin Davidson (HK)By Justin Davidson (HK) on Posted in Copyright
On November 5th 2018, at the inauguration ceremony of the first-ever China International Import Expo held in Shanghai, President Xi Jinping reassured investors, especially foreign enterprises, on the administration’s determination to protect their intellectual property rights in China. In the speech, President Xi announced that in order to significantly increase the cost of infringing IPR … Continue reading

Bill C-86 — significant changes to Canada’s IP regime

Amy Grenon (CA)By Amy Grenon (CA) on Posted in Copyright, General, Trademark
The federal government’s recent omnibus budget bill, Bill C-86 tabled October 29th, 2018, proposes significant changes to Canada’s IP laws. Division 7 of the Bill is intended to implement many aspects of the government’s IP strategy announced in April 2018, and targets the Patent Act, the Trade-marks Act, and Copyright Act; provides for a new … Continue reading

No use crying over spilt (plant-based-dairy-free-alternatives-to) milk?

Georgina Hey (AU)Isobel Taylor (AU)By Georgina Hey (AU) and Isobel Taylor (AU) on Posted in Advertising
Every trendy café these days seems to have a selection of dairy-free milk alternatives as long as a wine list, from the usual suspects like soy, coconut and almond, to more unusual new favourites like rice, hemp, pea, flax and oat. With vegan, dairy-free or plant-based diets becoming more and more popular for health, environmental, … Continue reading

Amended Australian IP laws receive Royal Assent with little fanfare

Georgina Hey (AU)Isobel Taylor (AU)By Georgina Hey (AU) and Isobel Taylor (AU) on Posted in Copyright, General, Trademark
On 24 August 2018, the creatively named Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2018 quietly received Royal Assent, with some parts of the new Act entering into force the following day. As the name indicates, the primary focus of the new legislation is to implement the recommendations made … Continue reading

V Energy loses a mother of a battle over color trademark: Australia court’s decision in Frucor v Coca-Cola

Helen Macpherson (AU)Alyson Poole (AU)By Helen Macpherson (AU) and Alyson Poole (AU) on Posted in Trademark
We, as consumers, regularly associate colours with our favourite brands as we stroll down supermarket aisles and peer at billboards and banners in shopping centres.  But for brand holders, gaining protection for proprietary colours is not a walk in the (green) park.  The recent decision of Frucor Beverages Limited v The Coca-Cola Company [2018] FCA … Continue reading

Mirror, mirror on the wall, what’s my taxable Insta value after all?

Georgina Hey (AU)Isobel Taylor (AU)By Georgina Hey (AU) and Isobel Taylor (AU) on Posted in Advertising, Trademark
In sad news for celebrities and Instagram influencers across Australia, the introduction of the so-called ‘fame tax’ as part of a raft of integrity measures announced in the 2018/19 budget means that they could end up paying higher taxes on the income and non-cash benefits earned through the commercial exploitation of their image rights. In … Continue reading

Changes proposed regarding parallel imports – An exhausting concept for Australian trade mark owners?

Frances Drummond (AU)Rebecca Brenikov (AU)By Frances Drummond (AU) and Rebecca Brenikov (AU) on Posted in Trademark
In this article, we consider; the changes to the Trade Marks Act proposed in respect of parallel imports which the Draft Explanatory Memorandum states are aimed at ensuring that the law “better meet[s] the objective of facilitating the parallel importation of goods into Australia to the benefit of consumers by limiting the strategic use of … Continue reading

The European Commission has its say: EU trade marks post-Brexit

Georgina Hey (AU)Sophie Lees (AU)By Georgina Hey (AU) and Sophie Lees (AU) on Posted in Trademark
On 28 February 2018, the European Commission released its draft withdrawal agreement setting out a proposal on the arrangements for the withdrawal of the UK from the EU (Withdrawal Agreement). The full text of the Withdrawal Agreement can be viewed here: European Commission’s Draft Withdrawal Agreement dated 28 February 2018 (see Title IV on Intellectual … Continue reading

Cybersquatters – How to protect your brand from unwanted ‘guests’ online

Georgina Hey (AU)Rebecca Brenikov (AU)By Georgina Hey (AU) and Rebecca Brenikov (AU) on Posted in Advertising, Trademark
The internet is now the normal conduit for everyday personal, commercial and social transactions. It is more important than ever to ensure that your consumers know where to find your business online, and that no third parties are seeking to trade off your reputation in the online space. Domain names are the primary form of … Continue reading

Shocking your clients just became passé: US Court takes away the edge from scandalous brands

Frances Drummond (AU)Isobel Taylor (AU)By Frances Drummond (AU) and Isobel Taylor (AU) on Posted in Trademark
Thanks to two recent rulings of the US Supreme Court and the Court of Appeals of the Federal Circuit Court, trade marks containing “disparaging”, “immoral” and “scandalous” matter are no longer barred from obtaining registration in the United States of America. In the past, the US Patent and Trade Mark Office (USPTO) had the power … Continue reading

Trade mark update: 11th Edition of the Nice Classification came into force on 1 January 2018

Frances Drummond (AU)Rebecca Brenikov (AU)By Frances Drummond (AU) and Rebecca Brenikov (AU) on Posted in Trademark
As many of you will know, the Nice Classification is the international system used to classify goods and services for trade mark purposes. The World Intellectual Property Office regularly updates and amends the Nice Classification in order to ensure that the lists remain current and include new products and services that come to market. On … Continue reading

What Brexit means for IP: The UK Law Society, the IP Bar, CIPA and CITMA weigh in on Brexit strategy

Georgina Hey (AU)Rebecca Brenikov (AU)By Georgina Hey (AU) and Rebecca Brenikov (AU) on Posted in Advertising, General, Trademark
It’s no surprise that many in the professional and legal services industries are putting increasing thought into what the post-Brexit world will, or should, look like. The Chartered Institute of Patent Attorneys (CIPA) in the UK has been the latest body to put its two cents (or pennies) into the mix. Brand owners from all … Continue reading

New country of origin food labelling requirements for Australia – is your packaging up to scratch?

Georgina Hey (AU)Rebecca Brenikov (AU)By Georgina Hey (AU) and Rebecca Brenikov (AU) on Posted in Advertising
Businesses have until 1 July 2018 to transition to a new system of country of origin labelling for food products in Australia. The incoming Country of Origin Food Labelling Information Standard 2016 (Standard) imposes stricter labelling requirements on “priority”, as opposed to “non-priority”, foods and is intended to help consumers better understand where their food … Continue reading

Managing your products when a patent expires – how good brand management can maintain product and brand awareness, and build market share

Georgina Hey (AU)By Georgina Hey (AU) on Posted in Advertising
The Australian Government’s recently expressed interest in cracking down on misuses of market power may have left some patent holders with concerns about the proposed amendments to the Competition and Consumer Act 2010 (the Act). All the fuss relates to section 46 of the Act: the provision which prohibits a company with a substantial degree … Continue reading

‘Apples, Beatles and four decades of litigation’ – Cautionary tales for start-ups settling on a new brand name

Georgina Hey (AU)Isobel Taylor (AU)By Georgina Hey (AU) and Isobel Taylor (AU) on 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
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