Archives: Trademarks

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More Changes to the EU Trade Mark Regime

Back on 23 March 2016,  the first round of reforms to the Community Trade Mark regime was implemented.   Amongst other changes, the Office for Harmonization in the Internal Market (OHIM) became the ‘European Union Intellectual Property Office’ (EUIPO) and the Community Trade Mark (CTM) was renamed the ‘European Union Trade Mark’ (EUTM).   These changes were introduced by the “Amending … Continue Reading

AFCP 2.0 and QPIDS Pilot Programs Extended by USTPO

The U.S. Patent and Trademark Office (USPTO) has announced that the After-Final Consideration Pilot 2.0 (AFCP 2.0) and Quick Path Information Disclosure Statement (QPIDS) pilot programs have been extended to September 30, 2018. AFCP 2.0 and QPIDS are programs intended to further the goals of compact prosecution and foster increased collaboration between examiners and stakeholders. … Continue Reading

Intellectual Property Threats Reforms – Will IP Owners Benefit?

The Intellectual Property (Unjustified Threats) Act 2017 (the “Act”) comes into force on 1 October. It will reform UK law on unjustified threats in intellectual property infringement disputes. What will change and will this benefit IP owners? Currently, UK legislation provides that a person (typically the rightsholder) must not threaten another person with proceedings in … Continue Reading

Christian Louboutin’s Red Sole – Is it Solely a Shape Mark?

On June 22, an advocate general at the Court of Justice of the European Union (“CJEU”) issued an opinion indicating that Christian Louboutin S.A.’s signature red sole might be a protectable trademark — or it might not be — depending on whether the protection of the shape in combination with color would afford the mark … Continue Reading

A New Slant: Supreme Court Invalidates Bar to Registering “Disparaging” Trademarks

Yesterday, the U.S. Supreme Court ruled in Matal v. Tam, 15-1293 (June 19, 2017), that the First Amendment of the U.S. Constitution prevents the U.S. Patent and Trademark Office (“PTO”) from declining to register trademarks deemed offensive or disparaging.  While the decision concerned the PTO’s rejection of an application to register the name of the … Continue Reading

Webinar: Deciphering and Maximizing Key Benefits of the European Trademark System and the Fallout from Brexit

Our Intellectual Property & Technology Practice partners Deborah Lodge (Washington) and Florian Traub (London) will be speaking in a Clear Law Institute webinar on the European Trademark system and Brexit’s impact on trademark rights – Deciphering and Maximizing Key Benefits of the European Trademark System and the Fallout from Brexit scheduled for June 21, 2017 … Continue Reading

Brexit – how will my IP rights be affected?

The two year countdown to Brexit has begun. With the clock ticking, there is now a more urgent need for businesses to plan for the impact that Brexit will have on their operations. We have produced an updated briefing for intellectual property owners explaining the likely implications for their EU-wide IP protection, particularly where there … Continue Reading

Ninth Circuit Holds The GOOGLE Trademark Is Not The Victim Of “Genericide”

Ninth Circuit Holds The GOOGLE Trademark Is Not The Victim Of “Genericide” On Tuesday, the Ninth Circuit issued its decision in Elliott v. Google, Inc., No. 15-15809 (9th Cir. May 16, 2017), affirming the District of Arizona’s ruling granting Google’s motion for summary judgment that its GOOGLE trademark is not subject to cancellation as generic. … Continue Reading

Apple’s attempts to trademark its iWatch are rejected – what are the wider implications?

An interesting judgment recently emerged from the Beijing IP court. The court rejected Apple’s attempts to trademark the standby screen on its iWatch, finding that the overall design lacked distinctiveness because it was too complex for consumers to recognise it as a trademark. In this article, first published in Intellectual Property Magazine (and reproduced with … Continue Reading

Creating a Unique Brand Amidst the Glut

With the proliferation of new products, websites and mobile apps in our accelerated economy, creating a unique, compelling brand is not easy.  A marketing department may work tirelessly to originate a brand that has the proper punch, only to have the lawyers say “it’s taken” (someone has already registered it as a trademark).  And as … Continue Reading

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
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