Category: Branding

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Australian trade mark law: Defending your well-known brand with a defensive trade mark registration

Australia’s trade mark legislation provides trade mark owners with the ability to register (in certain circumstances) their well-known brands as ‘defensive trade marks’ in respect of particular goods and/or services, even if the owner of the mark has no intention of using the mark in respect of those goods and/or services.… Continue Reading

FTC Staff Report Brings Dark Patterns to Light

Trick or treat? The Federal Trade Commission (FTC) staff is focused on one “trick” this spooky season: Designing user interfaces to trick or manipulate users into taking actions they would not otherwise approve of, or putting obstacles in place to discourage consumers from exercising certain rights. These so-called “dark patterns” are a continued focus of … Continue Reading

High Court of Delhi holds that acquired distinctiveness is necessary for obtaining registration of a shape mark

In today’s age, the importance of brands (and in turn trademarks) cannot be undermined. It is through brands that businesses (be it domestic or international) are able to thrive and flourish in various highly competitive sectors. While the brand promotion, protection, and enforcement strategy has been focused for many decades on conventional marks (such as … Continue Reading

Don’t Be Bamboozled by Environmental Benefit Claims

$5.5 Million FTC Settlements for Bamboo Textile and Environmental Benefit Claims Under Penalty Offense Authority The FTC recently announced that it has reached a $2.5 million settlement with Kohl’s and a $3 million settlement with Walmart for allegedly making misleading representations that textile products were made of bamboo fabric and provided environmental benefits because those products were derived from … Continue Reading

What To Consider When Launching a Cause Marketing Campaign

The war in Ukraine has led to Europe’s worst refugee crisis since World War II; more than 3 1/2 million civilians have already been displaced, and some observers expect the number to reach five million as the war continues to unfold. There has been an outpouring of concerned citizens the world over who are hoping … Continue Reading

A DAVID AND GOLIATH STYLE UGG BOOT DISPUTE

Just over five years after the California-based retail giant Deckers Outdoor Corp. (Deckers) filed a lawsuit against Sydney-based footwear company, Australian Leather Pty Ltd (Australian Leather) for trademark infringement, the U.S. Court of Appeals for the Federal Circuit has ruled in favour of Deckers. The Court of Appeals affirmed the previous decision of the district … Continue Reading

Expanding a Brand into Canada: Trademark Registrations- The Basics

When a corporation expands its business into Canada, consideration should be given to whether it can register its brand as a trademark in this new market. While a corporation may operate in this market without registered trademarks, many statutory frameworks, like the Canadian regime, offer additional benefits to companies[1] that have registered marks. If a … Continue Reading

Black Lives Matter Movement Sparks Branding Changes

The tragic killings of George Floyd, Breonna Taylor and Ahmaud Arbery this year, among others, have reinvigorated the Black Lives Matter movement, resulting in powerful nationwide conversations about racial injustice in the United States, with far-reaching ripple effects. Businesses across industries — such as sports, entertainment, consumer products and higher education — have reevaluated certain … Continue Reading

Out Of Character: Jersey Boys, Detective Stories, & The Case Of Space-Traveling Tardigrades

At heart, and still, I am a non-singing Jersey Boy, and one who grew up reading Sherlock Holmes stories and watching Star Trek, the Original Series (before it even needed that modifier), in reruns in the 1970s while also keeping up with the real Rocky.  And, I have been writing for ILN IP Insider for … Continue Reading

Supreme Court Unanimously Rules That Willfulness Is Not Required to Recover Profits

The U.S. Supreme Court resolved a circuit split on April 23, 2020, by unanimously holding in Romag Fasteners, Inc. v. Fossil Group, Inc., et al. that a brand owner is not required to prove that a trademark infringer acted willfully in order for the owner to be awarded the infringer’s profits. Background Romag Fasteners, Inc. … Continue Reading

GENERIC.COM — REGISTRABLE IN CANADA?

The U.S. Supreme Court recently confirmed that a “generic.com” term may be eligible for federal trademark registration in the U.S., in certain circumstances. We will review the relevant decisions, discuss the Canadian legal framework with respect to registration of such mark and consider the implications of seeking registration of a “generic.com” or a “generic.ca” mark … Continue Reading

Rebranding or launching a new product in the CPG space? Don’t neglect intellectual property

The coronavirus pandemic has presented many challenges for those in the consumer packaged goods (CPG) space, and beyond. Supply chain disruptions, rapid migration of point-of-sale from brick-and-mortar outlets to online retail, and overall shifts in consumer preference, eating and cooking habits, and personal safety needs has required many CPG companies to reevaluate and reinvent their … Continue Reading

In Determination of Trademark Parody Fair Use, Culture Differences and the Products Used Should be Considered

Generally speaking, “trademark parody fair use” is a defense where an unauthorized trademark user claims that the use should be shielded from liability because of public interests such as freedom of speech.  In Taiwan, while there were court judgments that recognized “trademark parody fair use”, there is no clear language for such defense in the … Continue Reading

Is BURNS NIGHT OFF KILT-ER?: Scotch, Trademarks & Distilling American Meanings

Within a year after the 1787 Edinburgh edition of his poems, American editions…were published in both Philadelphia and New York. Ever since we [Americans] have adopted the beauty, the humor and the wisdom of Robert Burns as part of our own culture and our own idiom—-often, even usually, without knowing the source in Scotland’s ploughman poet. … Continue Reading

Selling Your Products on US Online Marketplaces

Before you begin selling your products on a U.S. online marketplace like Amazon, Etsy or Rakuten, there are three intellectual property considerations to make: clearance, acquisition and enforcement. This article provides a summary of all three considerations and includes steps to take to help mitigate risk, decrease instances of infringers and position your product for … Continue Reading

Simon Cowell picks bone with “The Pets Factor” UK trade mark

When TV format creator Mark Duffy struck upon the tongue-in-cheek name “The Pets Factor” for what was (presumably) a talent competition for domestic animals, he might well have smiled at his own ingenuity. Conversely, when Simon Cowell heard about the name (via Mr Duffy’s application to register it as a UK trade mark in classes … Continue Reading

Descendants of Danish well-known scientist could not prevent the use of his name by a large Danish based stated-owned energy company

The descendants of a well-known Danish scientist could not prevent the commercial use of the name ØRSTED as a trademark, domain and company name by the Ørsted Group (former Dong Energy A/S). The parties to the dispute Before going into the details of the dispute, the parties are briefly presented in the following. H.C. Ørsted … Continue Reading

Nothing beats a good TM LWYR – Nike’s questionable LDNR campaign

A July 2018 decision of the UK Intellectual Property Enterprise Court (IPEC) appears to have put paid to Nike’s recent “Nothing beats a Londoner” ad campaign. The case highlights, with hindsight, a perhaps regrettable commercial/legal decision by the sports giant, whilst also demonstrating the usefulness of the IPEC as a means of speedy and effective … Continue Reading

Legal Risks Abound as the World Cup Kicks Into Gear

As with any major event, the FIFA World Cup presents an attractive marketing opportunity for brands to connect with consumers around the world. The World Cup is a particularly hot ticket for marketers because it only occurs once every four years and is followed closely by fans worldwide. It also helps that soccer (err … … Continue Reading

Can Trademarks Related to Cannabis be Protected?

Suppose that you want to federally register a trademark that identifies a source of goods or services related to your cannabis business.  What if the trademark covers merchandise indirectly related to cannabis or products directly related to the use of cannabis?  Should you attempt to register your trademark with the U.S. Patent and Trademark Office?  … Continue Reading

Nuthin’ but a Leaf Thang – Toronto Maple Leafs take issue with Snoop Dogg’s trade-mark application for LEAFS BY SNOOP Logo

Maple Leaf Sports & Entertainment Partnership (“MLSE”), the parent company of the National Hockey League’s Toronto Maple Leafs, has requested an extension of time to oppose a U.S. trade-mark application filed by one Calvin Broadus – better known as Snoop Dogg (“Snoop”) – for a logo featuring the words LEAFS BY SNOOP on a leaf-shaped … Continue Reading

The Jungle of Advertisement on Social Media

Lately social media has drawn a lot of attention in relation to unfair business-to-consumer commercial practices. Most recently, the Danish consumer ombudsman has reported the media bureau MemeCph and the toothpaste producer Unilever for being responsible for hidden advertisement through a Danish pop singer on her Instagram-profile. Furthermore, the consumer ombudsman in 2015 published a guideline … Continue Reading

“The Donald” Trump – Avoids Trade-mark Licensor Liability in Canada

I spent years at my office watching the gradual construction of the 70-story mixed-use TRUMP TOWER complex in downtown Toronto, Canada.  It is now a Toronto landmark and a place for the lawyers and bankers in the financial district to wine and dine clients.  Trump, two of his affiliated companies (Affiliates) plus the licensed developer … Continue Reading
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