Tag archives: trademark infringement

Australian Trademarks Law Review – Edition 2

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

Cryptocurrency and trademarks – a lesson in jurisdiction

On October 22, 2018, a federal trial court in Manhattan granted web services conglomerate Alibaba Group Holding Limited’s request for a preliminary injunction against several defendants that were offering cryptocurrency for sale, under the name “AlibabaCoin.” (Alibaba Group Holding Ltd. v. Alibabacoin Foundation, No. 18-CV-2897 (JPO) (S.D.N.Y. Oct. 22, 2018) Although neither Alibaba nor any … Continue reading

Amended Australian IP laws receive Royal Assent with little fanfare

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

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

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

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

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

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

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

Important benefits for Canadian trademark registrations

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

Copyrightability of private standards in federal regulations

On February 2, 2017, a federal trial court judge in Washington, D.C. ruled, in a 55-page opinion, that private standards developing organizations (“SDOs”) do not lose their copyright or trademark protection if a federal regulation adopts their standards. Background This case, American Society for Testing and Materials v. Public.Resource.Org, Inc., Case. No. 13-cv-1215 (TSC) (D.D.C. … Continue reading

Canadian pizza battle goes to trademark registrant

The value of reliance on a trade-mark registration, as opposed to prior use, stands out sharply in the recent Federal Court of Appeal of Canada case Pizzaiolo Restaurants Inc. v. Les Restaurants La Pizzaiolle Inc. ( 2016 FCA 256 October 28, 2016). Here the applicant Pizzaiolo Restaurants Inc. had filed two applications PIZZAIOLO and PIZZAIOLO … Continue reading

These aren’t the trademarks you’re looking for: Lucasfilm sues “Lightsaber Academy” for infringement

Lucasfilm, the Disney subsidiary and owner of the world-famous Star Wars franchise, is making headlines this week after filing suit against “Lightsaber Academy,” a school of Jedi swordplay. Lucasfilm’s complaint, filed in California federal court on October 14, targets Michael Brown, the operator of Lightsaber Academy, Thrills and Skills, and New York Jedi. Brown and … Continue reading

“Sue me already” – Analyzing Kanye’s (In)Famous Video (Part III)

Over the past week, the Brand Protection Blog has reviewed the different legal claims unwitting stars of Kanye West’s “Famous” video might assert the rap artist. In Part I, we analyzed claims for Trademark Infringement. In Part II, we took a look at claims for False Endorsement. Today, we consider whether the “Famous” video violates celebrities’ rights … Continue reading

“Sue me already” – Analyzing Kanye’s (In)Famous Video (Part II)

In our 3-part series, the Brand Protection Blog is reviewing the different legal claims unwitting stars of Kanye West’s “Famous” video might assert. In Part I, we analyzed claims for Trademark Infringement. Today we will cover False Endorsement. False Endorsement Some legal commentators have suggested that the celebrities featured in Mr. West’s video could bring a … Continue reading
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