As trademark owners it is vital to not only use your registered trademark in a serious and thus rights-preserving manner, but also continuously take care to obtain and secure evidence of a rights-preserving use. Proof of use can become significant at various stages in the life cycle of a trademark. Focusing on revocation actions by … Continue Reading
The Summer 2024 Olympics in Paris are underway and while millions of eyes are on the games, the United States Olympic & Paralympics Committee (“USOPC”) has its eyes peeled for trademark infringers. The USOPC serves both the National Olympic Committee and National Paralympic Committee for the U.S. and is responsible for the training and … Continue Reading
For many years, it has been possible to obtain registered IP protection for the designs of products that have visual appeal in the Member States of the EU. Separately, this is also the case in the UK. The resulting registered industrial design rights have become a valuable and powerful legal tool in every company’s IP … Continue Reading
On 15 May 2024 the UK Supreme Court handed down its judgement in the case of Lifestyle Equities v Ahmed (Lifestyle Equities C.V. and another (Respondents) v Ahmed and another (Appellants) – The Supreme Court) clarifying the law on the personal liability of individuals who (unknowingly) assist another (the Primary Infringer) to infringe a registered … Continue Reading
Much like word processing with spell check and other now commonplace digital tools were once only the stuff of science fiction, artificial intelligence (AI) is quickly becoming widespread in knowledge work including law practice. IP law is no exception. The use of AI in IP law practice has practical benefits, including the potential for enhanced … Continue Reading
Over the past several months, we have seen an increase in notices from alleged trademark firms. The emails are identical or substantially similar to the following: Hi [recipient], I hope this email finds you in good health. I am writing to you on behalf of the legal department of [Trademark Firm]. We have received an … Continue Reading
First, some context Like any other intellectual property asset, EU trade marks can be and are often used as collateral in financial transactions. However, reconciling the EU trade mark regulation (the “EU TM Regulation”) with the applicable national laws on “rights in rem” is not always straightforward, especially when the EU trade mark owner is … Continue Reading
In Waterdrop Microdrink GmbH v. Qingdao Ecopure Filter Co., Ltd., the District Court for the Central District of California denied a motion to compel compliance with a subpoena relating to a Trademark Trial and Appeal Board (“TTAB”) proceeding, because the subpoena was never signed by the Clerk of the Court — despite the fact that … Continue Reading
For every successful brand, it is critical to properly protect and to productively develop and use the underlying intellectual property (IP) in that brand to ensure its long-term growth.… Continue Reading
The Federal Circuit recently issued a decision with important ramifications on how petitions for cancellation due to fraud will be handled by the Trademark Trial and Appeal Board (“Board”) going forward. In Great Concepts LLC v. Chutter, Inc., the Court, with a 2-1 majority, found that the Board wrongly cancelled the registration of a trademark … Continue Reading
Counterfeiting is a global problem that affects a wide variety of entrepreneurs and innovators – from small businesses to global corporations. Action in China can be an important tool for combating these problems. Head of the firm’s China Intellectual Property team, Paolo Beconcini covers the complex challenges of fighting global counterfeiting for INDICAM (Italian Association … Continue Reading
The recent draft amendment of the Chinese trademark law seems to finally zero in on trademark squatters, as described in my previous blog here). The new regulations, if approved as drafted, will make it more difficult for squatters to steal others’ trademark by abusing the first-to-file system in force in China. This could be a … Continue Reading
The authors wish to thank Summer Associate Will Baker (Cleveland) for his work on this timely blog. Trademark owners take note: In Abitron Austria GmbH et al. v. Hetronic International, Inc. the Supreme Court definitively ruled that Sections 1114(1)(a) and 1125(a)(1) of the Lanham Act are not extraterritorial and extend only to claims where the … Continue Reading
A plaintiff has always been the “master” of a complaint, but such mastery is not unfettered. Principles of subject matter jurisdiction, proper venue, and personal jurisdiction restrict a plaintiff’s choice of forum. A trend of recent cases from the Supreme Court down through the lower courts continue to narrow that “mastery” that a plaintiff once … Continue Reading
Today, in a unanimous decision, the Supreme Court held that the First Amendment will not protect an infringers’ use of a confusingly similar trademark for its goods – even if it is a humorous parody. Justice Kagan writing for the Court held that the First Amendment does not give infringers license to trade on the … Continue Reading
The recently published Draft Amendment to the Chinese Trademark Law is proposing the introduction of important changes to the current trademark system in China. In addition to introducing tighter filing requirements and proof of use to combat trademark theft (see my prior blog), it is proposing amendments to the process for determination of a trademark’s … Continue Reading
Is this the time we can really see a change in the fight against Chinese trademark squatters, or are we just adding burdens to legitimate right holders? The China National Intellectual Property Association (CNIPA) has recently published a draft amendment to the Chinese Trademark Law. The document is still under examination and has been disclosed … Continue Reading
On 28 November 2022, the European Commission adopted proposals for a revised Regulation and Directive on industrial designs. The proposals, that are now sent to the European Parliament and Council for adoption, are aimed at modernizing the EU design system and the harmonized national design protection laws.… Continue Reading
Suing an overseas defendant often forces plaintiffs to go through the expensive and time-consuming process of serving the defendant through the Hague Convention. This requires translating the complaint and related documents, delivering them to the foreign country’s designated “Central Authority,” and then waiting for that Central Authority to actually deliver the documents and confirm delivery … Continue Reading
The concept of Metaverse as an online framework for economic interoperability was born in and around 2020. Since then, giant companies all over the world ― especially in the IT, entertainment and fashion businesses ― have begun to launch products and solutions related to the ever developing Metaverse. Fashion brands, artists and entertainers, among others, … Continue Reading
Back in 2020, the famous Chinese brew company Tsingtao Beer filed an administrative complaint for trademark infringement against a smaller Chinese competitor for the use of recycled Tsingtao beer bottles. The smaller brewery was filling legitimately recycled Tsingtao bottles with their own beer. The recycled bottles did not bear the Tsingtao labels and marks, which … Continue Reading
E-commerce platforms are full of Chinese traders selling foreign cosmetic products they purchased at a lower price outside China. These branded goods are sold without the trademark owner’s consent for a much lower price than that of the official retailer. The consequences of such so-called “parallel imports” are well-known: the foreign brand and its official … Continue Reading
The Metaverse trademark hype is on. Companies are increasingly focusing their attention on developing Metaverses, and big brands are entering the Metaverse through gaming, social networks and virtual commerce. They need to also secure the appropriate IP rights to protect their brands in this emerging new virtual market place. Fashion brands are thus filing trademark … Continue Reading
A recent Intellectual Property Enterprise Court Decision (IPEC) on 20 April 2022 has decided that ‘Muzmatch’, an online matchmaking service to the Muslim Community has infringed Match.com’s registered trade marks. The decision by Nicholas Caddick Q.C was that Muzmatch’s use of signs and its name amounted to trade mark infringement and/or passing off of Match.com’s … Continue Reading
