With the New Year, the California Secretary of State announced that it is now accepting applications for cannabis-related trademarks. This is welcome news for California cannabis businesses, which have struggled to obtain protection for their growing brands. As previously discussed, to date it has been difficult, if not impossible, for cannabis-related businesses to successfully register … Continue Reading
On Friday, December 15, 2017, the US Department of Justice and Department of State announced the launch of an IP Law Enforcement Coordinator Network. The Network focuses on international trademark counterfeiting, copyright piracy and other forms of intellectual property rights infringement across the world, spanning all industry sectors. Though the components of the Network are … Continue Reading
The European Court of Justice (CJEU) has confirmed that its 2012 landmark ruling in IP Translator does not have retrospective effect. The case concerned an application by Ms Isabel Del Rio Rodríguez to register “CACTUS OF PEACE” and “CACTUS DE LA PAZ” as EU trade marks. Cactus SA opposed the application based on its earlier … Continue Reading
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
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
In an important ruling, the UK Supreme Court has confirmed that the criminal offence provisions in S92(1) of the Trade Marks Act 1994 (TMA) apply to grey market goods as well as counterfeit goods. S92(1) TMA makes it an offence to apply to goods or their packaging a sign identical to, or likely to be … Continue Reading
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
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
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
Our Intellectual Property & Technology Practice partner Deborah Lodge (Washington) 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 at 1:00 to 2:15 pm … Continue Reading
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” 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
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
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
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
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
On November 8, seven states voted to liberalize existing cannabis laws, bringing the total number of states that will permit cannabis use in some capacity to nearly 30. Given that medical cannabis use has been legal in California for over 20 years and in light of the recent trend towards broader legalization, it may come … Continue Reading
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
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
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
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
On Wednesday, a Southern District of New York jury awarded punitive damages of $8.25 million to Tiffany & Co. in its case alleging Costco infringed the TIFFANY trademark by selling rings labeled “Tiffany” at its warehouse stores. This award is on top of the $5.5 million in damages the jury awarded on September 29, 2016 … Continue Reading
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
The UK’s withdrawal from the EU has significant implications for IP protection in the UK. EU rights, including the EU trade mark, will no longer cover the UK, pan- European injunctions will not be available, or effective in, the UK and the UK could be left outside the new Unitary Patent regime. We are holding … Continue Reading
