Tag archives: trademark

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

Justin Davidson (HK)Phoebe Poon (HK)By Justin Davidson (HK) and Phoebe Poon (HK) on 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

Trademarks, Internet sales, and personal jurisdiction

Susan Ross (US)Tim Kenny (US)By Susan Ross (US) and Tim Kenny (US) on 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

USPTO adopts new communication and electronic filing requirements

Alicia Groos (US)Stephanie Schmidt (US)By Alicia Groos (US) and Stephanie Schmidt (US) on 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! 

Georgina Hey (AU)Matt Allen (AU)By Georgina Hey (AU) and Matt Allen (AU) on 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

Unauthorized invoices – Canadian trademark owners beware

Mark Edward Davis (CA)By Mark Edward Davis (CA) on Posted in Trademark
Canadians trademark owners are being targeted with misleading fee and renewal notices. As discussed previously, this is not a new phenomenon, but is one we are seeing with increasing incidence. These seemingly official invoices have caused some to pay exorbitant fees to private companies in the mistaken belief that they are paying fees required by the Canadian Intellectual Property Office (CIPO).… Continue reading

Venezuela and US trademark owners

Susan Ross (US)By Susan Ross (US) on Posted in Trademark
US owners of patents and trademarks who have registered them in Venezuela find themselves in the unusual position of being prohibited by the US government from paying Venezuela any required fees in the Venezuelan cryptocurrency, the Petro.  For more information, please read our Legal Update.… Continue reading

Ok Google, Hey Siri, Hi Alexa – have you renewed my trade mark yet?

Frances Drummond (AU)Alyson Poole (AU)Sophie Lees (AU)Rebecca Brenikov (AU)By Frances Drummond (AU), Alyson Poole (AU), Sophie Lees (AU) and Rebecca Brenikov (AU) on Posted in Trademark
With the ever increasing ubiquity of technologies improving everyday tasks in personal life, it is little wonder that such technologies are also offering efficiencies and advantages in the work context.  Phrases such as process automation, data mining, machine learning and actionable intelligence are no longer far-out themes, but instead are being used regularly (and with … Continue reading

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

Do not be fooled — Misleading solicitations regarding your trademarks

Alicia Groos (US)Stephanie Schmidt (US)By Alicia Groos (US) and Stephanie Schmidt (US) on Posted in Trademark
Misleading trademark solicitations are becoming an epidemic. Trademark owners beware! If you have registered a U.S. federal trademark, you may know that you must periodically make certain filings to maintain or renew your registration. For most post-registration maintenance filings, there is a one-year window in which to make the filing and a six-month grace period … 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

Cryptocurrency and trademarks – a lesson in jurisdiction

Susan Ross (US)Kathleen Scott (US)By Susan Ross (US) and Kathleen Scott (US) on Posted in Trademark
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

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

USPTO warns of unauthorized changes to trademark files

Susan Ross (US)By Susan Ross (US) on Posted in Trademark
On October 19, 2018, the U.S. Patent and Trademark Office (PTO) posted a general warning on its website that unauthorized changes have been made to “a number” of active trademark applications and registrations. The PTO indicated that the unauthorized changes affect “a small percentage of total applications and registrations.” What can you do? If you … 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

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

Rebranding 4.0: Why authenticity matters to socially-aware consumers, and how to convey it

Georgina Hey (AU)Rebecca Brenikov (AU)By Georgina Hey (AU) and Rebecca Brenikov (AU) on 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
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