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.

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


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


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…

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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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U.S. Supreme Court Invalidates Statutory Provision against Offensive Trademarks

alice-moore-192521Although U.S. common law trademark rights are gained through use of the mark in commerce (without registration), registration of a trademark with the U.S. Patent and Trademark Office (“USPTO”) provides the owner with additional rights and benefits.  These include nationwide enforcement of the mark against infringers; constructive notice of the registrant’s claim of ownership of the mark; evidentiary presumptions of the validity of the mark, the registrant’s ownership of the mark, and the registrant’s exclusive right to use the mark in commerce on or in connection with the goods or services in the registration; the status of “incontestability” once the mark has used in commerce for five years after registration; and the ability to stop importation of infringing goods into the U.S.

However, the U.S. Lanham Act (15 U.S.C. 1051), which provides for federal registration of marks, contains a number of provisions barring the registration of certain kinds of marks.  In addition to barring registration of marks confusingly similar to other registered marks or merely descriptive of the goods or services, the Act also prevents registration of marks comprising “immoral, deceptive, or scandalous matter”; marks that “disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute”; a “geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods”; a mark that “consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation”; or a mark that “consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow” except by written consent. Continue Reading

T Minus 1 Year Until GDPR: Are You Ready for Take Off?

juliette-leufke-154599BOTTOM LINE

It remains to be seen what will happen after the GDPR becomes effective on May 25, 2018. The GDPR compliance roadmap can be helpful for any organization that collects or processes personal data, whether or not an organization in or outside of the EU believes it is subject to the GDPR. With just one year of the two-year implementation period left, organizations should be well on their way to preparing for the impact of the new regulation.

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