Archives: Trademarks

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Pink or Orange: Colors That Are the By-Product of a Functional Improvement to a Product Are Not Entitled to Trade Dress Protection

On January 5, the U.S. District Court, District of Colorado ruled that ceramics company CeramTec GmbH is not entitled to trade dress protection for the pink color of its hip implant components.  C5Med. Werks, LLC v. CeramTec GmbH, D. Colo., No 14-cv-00643-RBJ, 1517 decision highlights the limits of trade dress protection, which only extends to non-functional … Continue Reading

Arctic chill remains in ICELAND dispute

A recent story to hit the headlines concerns the trade mark dispute between the government of Iceland (the country) and the UK based frozen food retailer of the same name. Iceland (the UK food retailer) owns an EU trade mark registration for the word mark ICELAND. The Icelandic government believes that the retailer should not … Continue Reading

Keyword advertising – novel questions of honest concurrent use and passing off

Cases on trade mark infringement in the context of keyword advertising are rare. However, the UK High Court recently handed down a ruling on exactly that topic – in Victoria Plum Limited v Victorian Plumbing Limited. The decision is the first time a court has considered the ‘honest concurrent use’ defence to trade mark infringement … Continue Reading

Court ruling opens the way for brand owners to prosecute infringers

In a recent ruling, the UK Court of Appeal confirmed that anyone in possession of or selling ‘grey goods’ is liable to prosecution under the criminal provisions of the Trade Marks Act 1994 (“TMA”). The ruling is good news for brand owners, giving them another means of preventing the unauthorised sale of goods bearing their … Continue Reading

Rules of Engagement: Trademark Strategies, Protection and Enforcement in China

We are delighted to announce that our colleague in Beijing, Dr. Paolo Beconcini, has authored a comprehensive guide to trade mark protection and enforcement in China.  Launched today, the book is based on Paolo’s years of experience of advising international companies investing in the Chinese market. It will be of particular interest to foreign brand … Continue Reading

Our UK Intellectual Property Team leads our client to High Court Victory

We are pleased to report that our client, Process Components Limited (PCL), has been victorious in the High Court in a case concerning the sale and licence of intellectual property rights.  PCL was represented by our UK Intellectual Property team and secured a win on every issue in the claim. The decision is of interest … Continue Reading

Brexit and Intellectual Property Rights

On 19 July, we ran a webinar for clients entitled ‘Brexit: What could happen to my IP rights?’  We considered how IP protection in the UK will be affected by Brexit and discussed how IP filing and management strategies might be adapted now.  The webinar was well attended and client feedback was that it had been … Continue Reading

Brexit – What could happen to my IP rights?

The UK electorate has decided that the UK should leave the European Union (EU).  The referendum does not take immediate effect.  Current EU law and EU-wide rights, for example, the EU trade mark and the registered Community design, will continue to apply until the withdrawal from the EU actually happens.  The process of leaving the … Continue Reading

Developments in Intellectual Property Rights Enforcement at the Border

Our Washington DC office will be hosting an “Off the Record” luncheon program, “Developments in Intellectual Property Rights Enforcement at the Border,” sponsored by the International Intellectual Property Committee of the D.C. Bar International Law Section and cosponsored by the D.C. Bar Intellectual Property Law Section, the ABA Section of Intellectual Property Law, the ABA Section … Continue Reading

Webinar: Protecting IP Rights in Europe: Deciphering and Maximizing Key Benefits of the European Trademark Reforms

We previously reported on the pending reforms to the trade mark regime across Europe.  A number of reforms to the Community Trade Mark system will be effective on 23 March 2016 when the new EU Trade Mark Regulation comes into force.  Squire Patton Boggs partners Florian Traub (UK) and Deborah Lodge (DC) will be speaking in … Continue Reading

Window of opportunity for CTM owners to refine the scope of their marks

The Office for Harmonization in the Internal Market (OHIM) has issued some guidance for Community Trade Mark owners considering amending the goods/services covered by their marks under Article 28(8) of the new EU Trade Mark Regulation. Background We have previously reported on the pending reforms to the trade mark regime across Europe.  A number of … Continue Reading

Further Erosion to Section 2(a) of the Lanham Act – What’s Left?

We recently reported that in a landmark decision, the US Court of Appeals for the Federal Circuit found that the Lanham Act’s prohibition on the registration of disparaging marks violates the First Amendment right to free speech.  Not only did this decision pave the way to registration for owners of potentially disparaging marks, but it also … Continue Reading

U.S. Trademark Law: Prohibition Against Disparaging Marks is Unconstitutional

The United States Court of Appeals for the Federal Circuit ruled on Tuesday that the Lanham Act’s prohibition on the registration of disparaging marks – which was central in the controversy over the name of the professional football team the Washington Redskins – is unconstitutional.  This drastic change to U.S. trademark law will pave the … Continue Reading

EU Trade Mark Reforms Given the Green Light – Brand Owners Will Benefit

We previously reported on anticipated reforms to the trade mark system across the EU.  The European Parliament has now approved the reforms as of December 15, which is a little earlier than expected.  These reforms will impact the Europe-wide Community trade mark system as well as the national trade mark system of each EU member state. … Continue Reading

Webinar: Leveraging USPTO Technology Evolution Pilot Program

We recently reported on the United States Patent and Trademark Office’s new Technology Evolution pilot program, under which certain amendments to identifications of goods or services due to changes in evolving technology may be allowed.  There have been just over a dozen of these petitions filed since the pilot inception date of September 1, 2015.  However, most of … Continue Reading

Nestlé v Cadbury: Is this the break that KitKat needs?

The recent judgement of the European Court of Justice (“CJEU”) in Nestlé v Cadbury offers Nestle a glimmer of hope in their quest to register the shape of their ever-popular KitKat chocolate bar as a trade mark, which has vehemently (and so far successfully) been opposed by Cadbury, in the context of over a decade … Continue Reading

USPTO Pilot Program: Trademark Registration Owners May Now Be Able to Broaden their Goods and Services

Did your company at one time obtain a trademark registration covering goods that can now be considered “old technology,” such as music cassettes, VHS tapes, or floppy discs?  And now that your company has moved on to newer technology, such as downloadable music files, pre-recorded DVDs, or online software, you’re afraid that your long-standing registration … Continue Reading
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