New Guidance on the Subject of Comparative Advertising and Dilution of Goodwill

In 2023, the Federal Court of Canada released its decision in Energizer Brands, LLC and Energizer Canada Inc. v. Gillette Company (2023 FC 804). The decision clarifies some of the laws applicable to comparative advertising in this country and should guide the conduct of parties that engage in this form of commercial activity.

Energizer sued Duracell over a sticker advertising campaign that claimed that Duracell’s batteries lasted longer than their Energizer equivalents. The Duracell advertisements referred to Energizer both directly and indirectly with phrases such as “the bunny brand” or “the next leading competitive brand”.

Should Disclaimers Always Be Made in U.S. Trademark Applications?

By Daniel H. Bliss of Howard & Howard on April 3, 2024 Posted in Case Studies, Protection & Enforcement, Trademarks, United States

Suppose you have a pending U.S. trademark application for your trademark on goods or services for your business and a term or wording in the trademark is descriptive of your goods or services. During the examination of your trademark application, the examining attorney refuses registration because the term is merely descriptive of your goods or services and requires a disclaimer. Should you always agree to the disclaimer because your trademark application will be passed onto publication? The answer is NO! and you should argue against the requirement for a disclaimer particularly if the descriptive term is a unitary or incongruous term or a double entendre.

Comma, Comma, Comma, Comma, Comma Chameleon: How Punctuation Can Color IP & Other Legal Rights

By James P. Flynn of Epstein Becker Green on March 27, 2024 Posted in Case Studies, Copyright, Famous Marks, Legislation, Patents, Protection & Enforcement, Trademarks, United States

“[T]he comma…this capricious bit of punctuation…”

United States v. Ron Pair Enterprises, Inc., 489 US 235, 249
(1989) (O’Connor, J, dissenting)

For want of a comma, we have this case.”

O’Connor et al. v. Oakhurst Dairy et al.,
851 F.3d 69, 70 (1^st Cir. 2017)

“But, when pressed, I do find I have strong views about commas.”

Holy Writ by Mary Norris
THE NEW YORKER, February 16, 2015

Usage of ad words by a competitor does not amount to trademark infringement

By Gaurav Bhalla of Ahlawat & Associates on March 21, 2024 Posted in Advertising & Marketing, Asia Pacific, Branding, Case Studies, Famous Marks, Online Content, Protection & Enforcement, Trademarks

Google AdWords have long been used by businesses to ensure that their business listings feature on top of the Google search results when the users search for particular terms (which have been bought by a business from Google). While this process may sound perfectly fine when the ad words pertain to one’s trademarks or generic words, what happens when an entity starts purchasing the ad words for a competitor’s trademarks? Does it amount to trademark infringement or is it permissible since there is no actual use of the trademark (by an entity that is purchasing the competitor’s ad word)?

Australian Intellectual Property Reforms Ahead

By Denise Wightman of Kalus Kenny Intelex and Jessica Bell of Kalus Kenny Intelex on March 15, 2024 Posted in Australia, Legislation, Trademarks

2024 appears to be a year of change in the Australian Intellectual Property realm, with the adoption by IP Australia of the Madrid Goods and Services List and the introduction of the Intellectual Property Laws Amendment (Regulator Performance) Act 2023.

Adoption of the Madrid Goods and Services List

In January 2024 IP Australia announced that it would replace the current Trade Marks Goods and Services List with the Madrid Goods and Services List (MGS list) in March 2024. This change will align IP Australia’s classification of goods and services for trade mark applications with international best practices, and the standards used by the World Intellectual Property Organization (WIPO).

UK appeal court: beware of the “side-by-side” trade mark comparison

By Ben Milloy of Fladgate LLP on February 28, 2024 Posted in Branding, Case Studies, Famous Marks, Protection & Enforcement, Trademarks, United Kingdom

Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc & Anor [2024] EWCA Civ 29 (26 January 2024)

When assessing the likelihood of confusion between two marks in a trade mark clearance or infringement context, the orthodox approach of the diligent IP practitioner might be to set the two marks out next to one another, analysing them primarily from the perspective of the average consumer at the point of sale. Whilst the prospect of confusion arising after this point should be considered, it is unlikely to be the focus. A recent UK court of Appeal decision has, however, underlined that this technical, square-on comparison does not in fact reflect the real worlds that brands inhabit, and the various ways in which the average consumer can be confused by them even after a product has been sold.

THE COLOMBIAN COPYRIGHT AGENCY ANALYSES AI-CREATED WORKS AND PROVIDES AN INITIAL APPROACH TO THE PROTECTION UNDER COPYRIGHT LAWS

By María Fernanda Castellanos of Gamboa, García & Cardona on February 21, 2024 Posted in Case Studies, Copyright, South America

The protection of works created from the human intellect, under the legislations that have adopted a droit d’auter system, is centered on the relationship existing between the individual who created the work, and the piece that constitutes the protected work.

Therefore, the legal regulations which govern the prerogatives that the creator has concerning the protected work are supported on the premise that the creator is a human being, who has expressed and portrayed, in a tangible fashion, his or her idea or mental creation.

Can U.S. Trademark Registrations Be Strengthened Against Invalidation?

By Daniel H. Bliss of Howard & Howard on February 16, 2024 Posted in Case Studies, Trademarks, United States

Suppose that you have obtained a U.S. trademark registration for your trademark on goods or services for your business. Can your trademark registration be cancelled with the U.S. Patent and Trademark Office based on it being invalid? Can you file anything to strengthen your trademark registration against invalidation? The answer is YES! if the trademark has been in continuous use for five consecutive years subsequent to the date of registration.

Charter of the French Language

By Marie Lussier of Fogler Rubinoff LLP on February 7, 2024 Posted in Advertising & Marketing, Canada, Trademarks

The Quebec Charter of the French Language (the “Charter”) was adopted nearly 50 years ago to protect the status of the French language in the province of Quebec. It includes many rules, several of them directed at the language of business in Quebec, and some regarding the use of French on both product packaging and signage/advertising.

Presently, all product labelling and commercial signs appearing in Quebec must be in French – but the Charter provides certain exceptions for trademarks.

Trademark Considerations for Copyrighted Works in the Public Domain

By Joy J. Wildes of Davis+Gilbert LLP and Claudia G. Cohen of Davis+Gilbert LLP on January 31, 2024 Posted in Case Studies, Copyright, Protection & Enforcement, United States

In the United States, an original work of authorship fixed in a tangible medium of expression (meaning the work can be communicated in a visual or audio form) is a protectable copyright. This means that the owner has the exclusive right to reproduce, adapt, publish, perform, and display the work. Because copyright protection has a set term, copyrights in certain works necessarily expire each year and enter the public domain. Once a work has entered the public domain, it no longer retains copyright protection and cannot stop use of the work by others based on its prior copyright rights. However, a work’s copyright expiration does not extinguish any trademark
rights that the owner may maintain in that same work. This is because protection of trademarks, which are words, phrases, symbols, and designs that identify the source of goods or services, is separate from protection of copyrights and does not necessarily expire so long as the work is continuously and regularly used as a trademark.