CABBAGE WILL GET UK PORRIDGE – BUT IS IT GREY ENOUGH?

Readers of this blog may well be familiar with the regional exhaustion rule which applies to IP rights in the EU, including (for the time being) the UK.  Under this rule, IP rights can be exhausted where they are put on the market with the consent of the proprietor in one part of the EU, even if they are parallel imported to another Member State and sold there as ‘grey’ product.  But there is no international exhaustion, which would allow the sale of grey goods from countries outside the European Economic Area[i], even where they have been sold on those markets with the brand owner’s consent.  All of this is now fairly well established.

The UK, like most other EU countries, backs up civil causes of action for IP infringement with criminal sanctions to cover the most egregious cases, i.e. counterfeiting and pirating, but there has always been a question mark over the extent to which these criminal sanctions should apply to infringements relating to grey imports from outside the EEA.  A case recently came before the highest domestic UK Court – the Supreme Court – where this issue arose in the context of the offences which applied to misuse of registered trade marks for commercial purposes[ii]Continue Reading

“…as best as your interests don’t conflict with mine”: Lawyers Fighting Over Intellectual Property

When one thinks about lawyers and Shakespeare, many recall the oft-quoted and misunderstood statement “the first thing we do, let’s kill all the lawyers.”  ‘Henry VI,” Part II, Act IV, Scene II, Line 73.  But my favorite, as a better reflection of the best of our lot, is:

Sir, I shall not be slack; in sign whereof,

Please ye we may contrive this afternoon

And quaff carouses to our mistress’ health

And do as adversaries do in law,

Strive mightily, but eat and drink as friends

[Taming of the Shrew, Act I, scene 2, lines 248-52]

That represents the notion that lawyers, while representing opposing interests zealously, can nonetheless have relationships marked by civility or even camaraderie.  Continue Reading

Instagram Adds Paid Partnership Tool for Transparency

Instagram recently unveiled a new “branded content tool” that will allow influencers who are paid to endorse consumer products to tag partnering brands with an automated “paid partnership” disclosure.

This new feature is intended to create more transparency in the Instagram community and to provide sponsors and influencers the ability to track the performance of their social media content.

Background
This new tool is being rolled out on the heels of the 90 warning letters that the Federal Trade Commission (FTC) recently sent to branads, celebrities and influencers regarding Instagram posts which failed to disclose their paid relationships, as discussed in a previous Alert, through the use of words such as “ad,” “sponsor” or “paid.” The FTC has provided guidance to brands and influencers on how to make a clear and conspicuous disclosure of their material connections, which some influencers feel limits their creativity or authenticity. Continue Reading

CHANGING CANADIAN TRADEMARK LAWS – THE NEXT STEPS

As part of the implementation of various changes to Canadian Trademark Laws, the Federal Government of Canada released in June, 2017 the new proposed Trademark Regulations for public consultation. Canada has been modernizing its trademark law, including by moving to join three International Treaties administered by the World Intellectual Property Organization (WIPO) dealing with trademarks.  These include the Madrid Protocol, the Singapore Treaty and the Nice Agreement.  Canada has amended the Trade-marks Act to comply with the requirements of the treaties.  It is now taking other steps toward implementation of the changes.  One of these steps is these new proposed Trademark Regulations.

The proposed changes to the Trademark Regulations are intended to compliment the amendments that were made to the Trade-marks Act.  The Regulations provide details relating to procedures and time frames for filing, prosecution and registration of trademarks with the Canadian Trade-marks Office. Continue Reading

EXHAUSTION OF PATENT RIGHTS & DIRECT INFRINGEMENT RE-EVALUATED:THE MPEG LA / DPH CASE

The German Federal Court of Justice (Bundesgerichtshof) with its decision X 2r 33/10, announced on August 21, 2012, rejects claims for infringement of MPEG-2 video coding patents by a Greek DVD manufacturer: The DVD, as such, is NOT a means of infringement of the patent claim in dispute.

On August 21, 2012 the German Federal Court of Justice heard the appeal by the defendant, a Greek DVD manufacturer, in a patent infringement proceeding, and decided that the case in hand was part of a series of actions encompassing several proceedings (indeed nine actions with the same contents were filed against the defendant by nine members of the MPEG Patent pool). Continue Reading

Amendments to the pre-trial procedure for IP disputes

On June 1, 2016, the mandatory pre-trial procedure came into force. On May 26, 2017 the State Duma approved in the second reading amendments to the current pre-trial procedure.

Under the amendments, the pre-trial procedure extends only to the monetary disputes. The amendments (art. 1252 of the Russian Civil Code) also directly prescribe that the pre-trial procedure doesn`t apply to nonpecuniary claims for infringement of IP rights (for example, suppression of acts that infringe or endanger the IP rights; seizure and destruction of counterfeit goods; official publication of the court decision rendered against an infringer).

The general term of pre-trial procedure is 30 days, unless other term and (or) procedure is stipulated by law or agreement. Continue Reading

Can Trademarks Violate Free Speech?

Suppose that you want to register a trademark that identifies a source of goods or services for your business.  What if the trademark may be scandalous or disparage a particular group of people?  Should you register your trademark with the U.S. Patent and Trademark Office?  Can you obtain a registration from the U.S. Patent and Trademark Office?  The answer is YES!

Section 2(a) of the Trademark Act (15 U.S.C. § 1052) states in part:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…

Continue Reading

Matal v. Tam – Disparaging Trademarks are Registrable

It is well known that the trademark laws of the United States differ substantially from the trademark laws of countries around the world.  The United States Supreme Court recently clarified that ‘offensive’ trademarks are registrable, further differentiating the United States from the majority the world.

Morality Refusals

Many jurisdictions have prohibitions against registration of marks that are considered offensive, immoral, or contrary to the public order.  Council Regulation (EC) No. 207/2009, Article 7(1)(f) provides an absolute ground for refusal of “trade marks which are contrary to public policy or to accepted principles of morality.”  While the specific laws regarding morality of individual member states are not necessarily binding on EUIPO (formerly OHIM), they can be persuasive evidence of how a mark would be received by the public. Continue Reading

Greek TV stations licensing Odyssey

It is undeniable that the relation of the Greek state with the television stations has always been turbulent, and the legal status regarding these stations has always been uncertain.

Law 1866/1989 regulated for the first time the grant of a license for the establishment and operation of non-state stations, but without a tender procedure. This Law also established the National Radio and Television Council (NRTC) which was assigned responsibilities such as the supervision of television stations. Thus, the first licenses were granted, but without signing the legally required agreement for the completion of the license and as a result the television stations have never operated with total legitimacy. In the following years new laws provided that for the issuance of licenses of private television stations an invitation to tender is necessary and that the existing licenses would still apply until the tender procedure. Laws followed that set deadlines for the issuance of the invitation to tender and for the grant of licenses, which were constantly extended by subsequent laws, with the latest date set for the grant of licenses being Dec. 31, 2015. Continue Reading

Which is the future for movement trademarks in Europe? A work in progress…

miguel-salgado-160276EU Regulation no. 2015/2424, entered into force on March 23, 2016, introduced a number of changes to the European trademark regime.

Among them, the amended regulation provides for the abolition of the graphic representation requirement. This implies that, as of October 1, 2017, signs may be represented in any suitable form, using the available technology, provided that the representation is clear, precise, autonomous, easily accessible, intelligible, durable and objective.

Such requirements are, however, in line with the criteria already established in the past by the European Court of Justice with the Sieckmann judgment (C-273/00).

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