Jessica Bell, Kalus Kenny Intelex, Melbourne Australia
A recent trade mark stoush in the eyelash extension market highlights the importance of registering trade marks in all states of Australia, and ensuring that trade marks that intend to be used are registered as soon as possible.
The Australian Trade Marks Office (ATMO) recently dismissed two related actions for removal brought by beauty salon Whiplash’d Pty Ltd (Whiplash’d) against two registered trade marks owned by Mae Watson (Watson) for beauty-related services including eyelash extensions. Both of Watson’s marks, ‘Whiplash’ and ‘WHIPLASHED’ remained on the register.
Suppose you want to register a trademark that identifies a source of goods/services for your business. What if the trademark describes an ingredient, quality, feature, function, characteristic, or purpose of your goods/services? Can your trademark be too descriptive to obtain a registration from the U.S. Patent and Trademark Office? The answer is YES! if the mark is highly descriptive and has not acquired distinctiveness.
In July 2024, I discussed proposed changes to trademark proceedings in Canada. Following a public consultation period, revised Regulations came into force on April 1, 2024 that incorporate those proposed changes. The changes aim to improve the efficiency of dispute resolution proceedings in Canada. Time will tell if that goal is achieved but, for now, practitioners and stake holders should be aware of key changes affecting the conduct of opposition proceedings in Canada.
Recently, the U.S. Copyright Office published the second of an intended three-part report entitled “Copyright and Artificial Intelligence.” Here are those three parts:
Part 1: Digital Replicas (aka “Deep Fakes”), published July 31, 2024;1
Part 2: Copyrightability, published January 29, 2025;2 and
Part 3: Legal implications of training AI models on copyrighted works, licensing considerations, and the allocation of any potential liability, publication date to be decided.3
Collectively, this report – I’ll refer to it here as the “AI Report” – is intended to provide the Copyright Office’s perspective on fundamental questions for copyright law and policy implicated by a technology described by the Office as presenting both “exciting opportunities” and potentially “existential” threats.
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 genericness? If so, what is the appropriate time period for assessing whether a trademark is generic? Is the appropriate time period at the time of registration or subsequent to the date of registration? The answer is YES! for both if the trademark was either generic at the time of registration or subsequent to the date of registration.
Intellectual property (IP) is often misunderstood, leading to costly mistakes for businesses and individuals alike. Many assume that once they create something, they automatically own the rights everywhere, or that patents and trademarks offer blanket protection. In reality, IP is a complex legal landscape governed by factors like value, ownership, jurisdiction and timing. Understanding these nuances is crucial when protecting assets, making business decisions or choosing legal counsel. Separating fact from fiction can mean the difference between securing an innovation or losing it.
In this article, we’ll review the most common IP misconceptions…
Authors: Samantha Rothaus, Howard Weingrad and Jordan Thompson
The power and application of AI is growing exponentially. As is often the case with the introduction of revolutionary technologies, legislation at both the federal and state level has been slow to catch up. On a daily basis, industries are grappling with how to adapt, and how to navigate this quickly evolving, largely unregulated space. Such a statement could not ring more true for the entertainment and advertising industries – where we’ve seen an uptick in AI being leveraged nefariously by third parties to replicate the voice, image and likeness of performing artists – to create new content without permission from, or the participation of, the artist.
It is easy to think about the issue of AI in the context of A-list celebrities like Tom Hanks, Scarlett Johansson and Morgan Freeman – who have all spoken out publicly about the impact of AI on the industry, warning consumers about fake ads and sharing personal stories about how their likeness has been misappropriated through AI tools. However, the impact goes far beyond household names. In fact, AI’s digital imitation capabilities arguably pose the biggest threat to everyday working actors, including background actors, who have yet to gain the leverage or access to resources that fame and celebrity status brings. With AI posing such an existential threat to performers, SAG-AFTRA, the union representing over 160,000 performers (including actors, singers and voice over artists), has sprung into action – taking on AI as a key issue, and pushing for legislative and contractual protections to implement guardrails and reinforce the ethical use of AI.
By Elena Nikolarea, Associate at A. & K. METAXOPOULOS AND PARTNERS LAW FIRM
It has become quite common for advertisers of different kinds of products or services, both in Greece and abroad, to intend to use photos and/or videos of Greek archaeological monuments (such as the Acropolis etc.) for their promotional campaigns.
In this regard, it is important to note that, under Greek Law, when depictions of Greek monuments are intended to be used for commercial purposes (such as in an advertising campaign, in the form of images or videos), appropriate prior licensing should first be obtained by the competent authorities of the Greek Ministry of Culture, and relevant fees need also to be paid.
By Jessica Bell, Lawyer – Kalus Kenny Intelex, Melbourne, Australia
Pop star Katy Perry has successfully appealed a Federal Court ruling over the use of an Australian designer’s trade mark registration for the words KATIE PERRY. The recent decision by the Full Court of the Federal Court unanimously overturned Justice Brigitte Markovic’s findings in Taylor v Killer Queen, LLC (No 5) [2023]. The trio found that Katie Taylor’s trademark was not validly registered and ordered for the registration to be cancelled.
In January 2025, the Registrar of Trademarks launched a pilot project in which it sends notices to certain registrants asking them to show use of their registered mark, failing which their registration is to be cancelled.
These notices are subject to the same modalities as those issued at the request of a third party, pursuant to S. 45 of the Trademarks Act. The registrant must file affidavit evidence showing the use of the registered mark in Canada, in the normal course of trade, with each of the goods/services covered by their registration, or establish exceptional circumstances to excuse their non-use.
In January, the Registrar issued 100 such notices. A further 50 will issue in each of February and March. No number has been set for the following months, and no data is available at this time on whether any registrations have been cancelled (or maintained) pursuant to these notices.
