Category: Protection & Enforcement

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Seedlings of Ideas For Artificial Intelligence: Learning From A Genetic Resources/Traditional Knowledge Treaty, The Plant Patent Act, & Nico Tanner

The World Intellectual Property Organization announced on May 24, 2024, a treaty on intellectual property, genetic resources, and associated traditional knowledge that was twenty-five years in the making.  As WIPO’s press release noted, “[n]egotiations for this Treaty began at WIPO in 2001, initiated in 1999 with a proposal by Colombia, where discussions were notable for … Continue Reading

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 … Continue Reading

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

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 … Continue Reading

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

“[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 (1st Cir. 2017) “But, when pressed, I do find I have strong views about … Continue Reading

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

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 … Continue Reading

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

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, … Continue Reading

Trademark Considerations for Copyrighted Works in the Public Domain

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 … Continue Reading

2023: The Year of the Burgers

From the Big Mac v Big Jack to the KFC v HFC – 2023 was the year of the burger. In Australia, the burger debate was first brought to our attention in 2020 following a marketing campaign by Hungry Jack’s Pty Ltd (Hungry Jack’s) for its limited-edition Big Jack burger. Hungry Jack’s (better known as … Continue Reading

Court clarifies process for CMO equitable remuneration

Introduction This case(1) concerned a collective management organisation’s (CMO’s) application for the temporary determination of related and neighbouring rights and copyrights. This was for equitable remuneration for public reproduction of intellectual works by catering businesses (ie, coffee shops). The judgment also dealt with the presumption of management and protection representative authority for CMOs.… Continue Reading

EUROPEAN COURT OF JUSTICE: Judgment in Joined Cases C‑775/21 and C‑826/21

Broadcasting of background music – Equitable remuneration – Mere provision of physical facilities – Sound equipment on board trains and aircraft – Presumption of communication to the public as a result of possession of technical means – Implications on Greek case law and practice in relation to use of in-store/background music in business premises.… Continue Reading

Does food flavouring constitute a “work”?

Introduction In this case before the Multi-member Court of First Instance of Thessaloniki, the plaintiff requested judicial protection of his recipes (i.e., dishes and seasonings) as works of IP. (1) He made this request on grounds including trademark law and unfair competition law. However, the Court rejected the action as:… Continue Reading

Maybe Duct Tape Can’t Fix Everything: Slippery Standards As Copyright Goes Bananas

Whether one focuses on the word’s connotation of silliness or excitement, or maybe even anger, or analogizes to the raucous and rhymingly-named team from Savannah that makes up its own baseball rules, US copyright law is currently going a little “bananas.” From ongoing debates about the human element (or requirement) of authorship to debates over what … Continue Reading

PRE-DETERMINED INDEMNIFICATION REGULATIONS FOR TRADEMARK INFRINGEMENT ACTIONS IN COLOMBIA

When litigating trademark infringement cases in Colombia, the issue arises as to how the plaintiff should provide valid evidence of the damages arising from the unauthorized use of a trademark, as well as to what admissible evidence may be used to prove the amount of the indemnification claimed in the proceeding.… Continue Reading

Delhi High Court holds that personality rights of deceased persons are not heritable

There has been immense activity surrounding the jurisprudence of celebrity rights in India with numerous judicial pronouncements in recent years. As regards legislation, there is no statute in India that expressly recognises the publicity or personality rights of individuals; therefore, the aspect of inheritance of publicity rights of a deceased person is still not entirely … Continue Reading

When must public performances of musical works be reported to CMOs?

The introduction of Law 4481/2017 into the Greek legislation aimed to regulate the collective management of IP and relative rights, thus amending the EU Collective Rights Management Directive. (1) Specifically, in its regulation of the public performance of musical works incorporated in legitimately released sound carriers, stores, and undertakings, article 24 of Law 4481/2017 introduced a … Continue Reading

FIRST-TO-FILE OR FIRST-TO-USE? TRADEMARK PROTECTION IN AUSTRALIA

Foreign entities wishing to register an Australian trademark should be aware that Australia is a ‘first-to-use’ jurisdiction. This means that the owner of a trademark is the first user of that trademark. First to File In some jurisdictions, the entity that is the first to file an application to register a particular trademark is the … Continue Reading

CRITERIA TO AVOID CANCELLATION FOR LACK OF USE OF A TRADEMARK IN COLOMBIA

Exclusive rights over a trademark in Colombia arise from registration. Also, when holding a trademark registration in Colombia, the obligation arises for its owner to use the trademark in commerce, beginning three (3) years from the date when registration was granted.  This means that a trademark registration in Colombia may be canceled by the Trademark … Continue Reading

The Training Wheels are Off: The Copyright Implications of Training Generative AI

With the introduction of several readily available applications, artificial intelligence (AI) has leaped into the mainstream and brought with it a host of legal questions.  Following the release in November of the now popular generative AI platform ChatGPT by OpenAI, companies including Microsoft and Google are rushing to release their own generative AI services or … Continue Reading

OPPOSING A TRADEMARK APPLICATION IN COLOMBIA BASED ON A U.S. TRADEMARK

Exclusive rights over a trademark in Colombia arise solely from registration. Therefore, the general rule is that a trademark registered or protected under the legislation of a different country may not be used as valid grounds for opposition against a trademark application in Colombia. However there are exceptions to this rule, namely, by filing an … Continue Reading

Swiss federal agency successfully obtains relief in trademark issue before an Indian High Court

The High Court of Delhi recently adjudicated upon a case that involved an appeal from Armasuisse (a Federal Agency of the Swiss Federation) against orders of the Indian Trade Marks registry granting trademark registrations to a private Indian company for the marks SWISS MILITARY and in respect of class 25 goods. As a background, Respondent … Continue Reading

Delhi High Court permits use of the mark ‘FLY HIGHER’ by VISTARA Airlines on the ground of the mark not being used as a trademark

The Delhi High Court (‘Court’) in its judgment (dated October 28, 2022) in the case of Frankfinn Aviation Service Private Limited v. Tata SIA Airlines Limited, [CS(COMM) 54/2022 & I.A. 1795/2022, 3651-52/2022] recently deliberated whether the exclusive rights available to a trademark owner under the Indian Trade Marks Act, 1999 (‘Act’) would restrain a third-party … Continue Reading
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