Category: Trademarks

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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

Australian Intellectual Property Reforms Ahead

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 … 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

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

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 … 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

Duties involving IP matters at the beginning of the corporate term in Colombia

The end of the calendar year is also, for legal purposes, the end of the corporate and accounting year, under Colombian Law.  The beginning of a new corporate year, on January 1, triggers, for corporate entities and branches of foreign companies, the need to carry out several duties, both in the form of legal obligations … Continue Reading

With Friends Like These: Copyright Implications Of Novelists Drawing Inspiration From The Real Lives They Cross

Fiction writing has a curious claim on truth.  We learn this at the youngest age, listening to fairy tales when the child in us “intuitively comprehends that, although these stories are unreal, they are not untrue …”  Bettelheim, The Uses Of Enchantment: The Meaning and Importance of Fairy Tales  (at 73).  We hear this in … Continue Reading

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

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

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

Make Your Mark On History: Connecting Tradenames To Landmark Events, People & Places

The phrase “make your mark on history” is a commonplace one with several meanings and connotations.  It is one offered at many high school and college commencement speeches as an exhortation to graduates to have an impact beyond themselves–as future-President, then-Senator John F. Kennedy said when telling Northeastern’s graduating class in 1956 “to make your … 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

REJECTION OF A REGISTRATION BASED ON POSSIBLE UNFAIR COMPETITION IN COLOMBIA

Decision 486 of 2000 of the Andean Community sets forth several events that may give rise to the rejection of trademark registration.  Said events intend to protect the general interest that is involved in ensuring that no exclusive rights are granted over signs that are not appropriable by the applicant (absolute grounds for rejection) or … 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

Defining Boundaries: IP Law Addresses Exterritoriality, Lexicography & Human Touch

“Yes, the law is about words…,” says Ben Chiriboga in writing about the essential skills that lawyers must have.  And Ken White noted more recently that “the entire project of the law is about words meaning specific things.”  But our problem often is that the law, or lawyers, frequently use unfamiliar or exotic terms that … 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
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