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.
Suppose you have uncovered a copyrighted work from another that contains copyright management information such as a copyright notice. However, you want to remove or alter this copyright management information. Should you remove or alter any copyright management information from the copyrighted work? The answer is NO because there is liability!
By Abhijeet Das, Partner, Pragya Jain, Associate and Ashish Kumar, Associate, LexCounsel Law Offices
Introduction
Post-pandemic, there has been a significant rise in digital marketing worldwide. Companies are utilising platforms (“Platforms”) like Google Ads and various social media networks to connect with prospective customers. To showcase their products or services on these Platforms, businesses often use keywords or metatags to attract users searching for similar offerings. However, instances have emerged where companies use the trademarks of other businesses as keywords to advertise their own products or services. Companies are pouring huge amounts of money into ensuring their websites get noticed and as a result, some are adopting tactics like manipulating meta tags, framing, and using deceptive links to attract more visitors. Metatags are HTML elements that provide metadata about a webpage, such as descriptions or keywords, which help search engines categorize and rank pages.
So I thought that I would go with those flows and take a look at whether there are intellectual property discussions likely to be resolved this year, or whether, despite our initial commitments to stay the path to completion, such decisions will founder like so many January diets (“90% of people give up on their new year diet just 12 days into January, with 83% going on to gain back more weight than they lost”), first-quarter gym schedules (studies show that gym attendance spikes in January and remains above average through mid-March), and turn-of-the-calendar-page commitments to self-improvement. (as to keeping New Year’s Resolutions generally, “43% of people expect to fail before February, and a mind-blowing 23% do so in the first week”; only 9% succeed in achieving goals). With that description, you can see the importance of the question mark in the title, as these issues may or may not resolve in 2025, regardless of our initial intentions and commitments.
In a recent Federal Court decision, Justice Michael Wheelahan has dismissed claims against Cantarella Bros Pty Ltd (Cantarella Bros) by international coffee giant, Koninklijke Douwe Egberts BV (KDE), that its Vittoria glass coffee packaging was too similar to the famous Moccona coffee jar.
