In a suit alleging trademark infringement and unfair competition, the Korean Patent Court concluded that the use of the mark “” in connection with “unmanned lodging services” used for so-called love motels with an image of a naked woman, did not infringe Outback Steakhouse’s trademark. But it did constitute unfair competition because that use harmed … Continue Reading
The search for spices, and the gold that one expected to find nearby (or earn through sale of the spices), in many ways drove the Age of Exploration. And spices still hold a special place in our economy and in our imagination; in fact, we believe that spices “all hold magic.” Part of that magic … Continue Reading
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
Recent years have witnessed a surge in the United States in the appreciation for fine food and those who create it. Indeed, the concept of the “celebrity chef” has taken such hold in the United States that there are entire television networks and countless magazines (on-line and in print) to cooking, recipes, chefs and the … Continue Reading
** Originally published by DRI in the DRI IP Committee newsletter** Recently the Korea Supreme Court issued a significant ruling, providing guidance on the availability of statutory damages in trademark infringement actions. This article discusses that ruling. Under the Trademark Act of the Republic of Korea (“the Act”), a trademark owner is entitled to receive compensation … Continue Reading
When one thinks about lawyers and Shakespeare, many recall the oft-quoted and misunderstood statement “the first thing we do, let’s kill all the lawyers.” ‘Henry VI,” Part II, Act IV, Scene II, Line 73. But my favorite, as a better reflection of the best of our lot, is: Sir, I shall not be slack; in … Continue Reading
As part of the implementation of various changes to Canadian Trademark Laws, the Federal Government of Canada released in June, 2017 the new proposed Trademark Regulations for public consultation. Canada has been modernizing its trademark law, including by moving to join three International Treaties administered by the World Intellectual Property Organization (WIPO) dealing with trademarks. … Continue Reading
On June 1, 2016, the mandatory pre-trial procedure came into force. On May 26, 2017 the State Duma approved in the second reading amendments to the current pre-trial procedure. Under the amendments, the pre-trial procedure extends only to the monetary disputes. The amendments (art. 1252 of the Russian Civil Code) also directly prescribe that the pre-trial procedure … Continue Reading
Suppose that you want to register a trademark that identifies a source of goods or services for your business. What if the trademark may be scandalous or disparage a particular group of people? Should you register your trademark with the U.S. Patent and Trademark Office? Can you obtain a registration from the U.S. Patent and … Continue Reading
It is well known that the trademark laws of the United States differ substantially from the trademark laws of countries around the world. The United States Supreme Court recently clarified that ‘offensive’ trademarks are registrable, further differentiating the United States from the majority the world. Morality Refusals Many jurisdictions have prohibitions against registration of marks … Continue Reading
EU Regulation no. 2015/2424, entered into force on March 23, 2016, introduced a number of changes to the European trademark regime. Among them, the amended regulation provides for the abolition of the graphic representation requirement. This implies that, as of October 1, 2017, signs may be represented in any suitable form, using the available technology, … Continue Reading
Although U.S. common law trademark rights are gained through use of the mark in commerce (without registration), registration of a trademark with the U.S. Patent and Trademark Office (“USPTO”) provides the owner with additional rights and benefits. These include nationwide enforcement of the mark against infringers; constructive notice of the registrant’s claim of ownership of … Continue Reading
There is a popular television show in the United States called American Pickers, which follow the adventures of antique and collectible “pickers” Mike Wolfe and Frank Fritz. Wolfe and Fritz travel around in a van with the logo Antique Archeology to buy, or “pick,” various items for resale, for clients, or for their own personal … Continue Reading
The mattress business is a competitive one! Trade-marks in the mattress business are valuable! Sleep Country Canada Inc. is a major mattress retailer in Canada. It is best known for its slogan “Why Buy a Mattress Anywhere Else?”. It owns two Canadian trade-mark registrations for this slogan. This trade-mark, together with its accompanying musical jingle, … Continue Reading
Unlike the practice in many countries, in most cases the U.S. requires a trademark owner to place the mark into actual use in commerce and provide specific types of proof of use before the registration certificate will issue. Similar requirements apply to the mandatory declaration of use to maintain or renew a U.S. registration. Effective … Continue Reading
As often as we warn our clients about unscrupulous companies that prey on trademark owners using notices and invoices that appear to come from government agencies, these worldwide scams continue to reap large quantities of fraudulent proceeds. The U.S. Patent and Trademark Office (“USPTO”) works in a variety of ways to alert the public to … Continue Reading
When we last left the Trademark Trial and Appeal Board (“TTAB,” an administrative arm of the U.S. Patent and Trademark Office), they had issued a precedential opinion that registrations could not be issued for marks that covered the sale and use of marijuana products or paraphernalia primarily intended or designed for use in ingesting or … Continue Reading
In the United States, a trademark can be refused registration on the Principal Register because the trademark is deemed merely descriptive. If the trademark is not allowed for registration on the Principal Register, it may be eligible for registration on the Supplemental Register. So, how do you determine if your mark is descriptive and which … Continue Reading
Two words, uttered in a certain tone and with a certain speed, are apt to suggest a bit of wastefulness, a touch of anarchy, and yet a sense of communal participation. Those two words, from Faber College of lore to present discussions of law: Food Fight!!!!!. And, we see the long smoldering discussions of geographical … Continue Reading
In a precedential opinion, the Trademark Trial and Appeal Board (“TTAB,” an administrative arm of the U.S. Patent and Trademark Office) affirmed the trademark examiner’s refusal to register HERBAL ACCESS for retail store services featuring “herbs.” Although the application did not mention marijuana as one of the “herbs” being sold, applicant Morgan Brown’s specimen of … Continue Reading
In the ongoing dispute between Michael Hallatt, a Vancouver businessman, and U.S. based retailer Trader Joe’s, the United States Court of Appeals for the Ninth Circuit (the “Ninth Circuit”) has overruled the 2013 decision of the U.S. District Court for the Western District of Washington (the “District Court”) not to hear Trader Joe’s claim against … Continue Reading
In Pfizer Canada Inc. v. Teva Canada Limited, 2016 FCA 161, the Federal Court of Appeal (“FCA”) recently overturned a substantial damages award in a pharmaceutical patented medicines action on the basis that the trial judge admitted improper hearsay evidence. This is an important reminder that the hearsay rule of evidence is alive and well. At … Continue Reading
The United Kingdom’s vote on June 23, 2016 to withdraw from the European Union has left many issues in flux, including the rights of owners of European Union Trademark registrations (EUTMs), formerly Community Trade Marks (CTMs). While details of the separation have yet to take shape, below are some points to keep in mind:… Continue Reading
Just over a week ago, the population of the UK voted in a referendum to leave the European Union. This was something of a shock, particularly for those of us in the legal profession who get to appreciate the effects that EU harmonisation of law can bring for our clients. The result is starting to … Continue Reading
