Tag: Case Studies

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

THE COLOMBIAN COPYRIGHT AGENCY ANALYSES AI-CREATED WORKS AND PROVIDES AN INITIAL APPROACH TO THE PROTECTION UNDER COPYRIGHT LAWS

The protection of works created from the human intellect, under the legislations that have adopted a droit d’auter system, is centered on the relationship existing between the individual who created the work, and the piece that constitutes the protected work. Therefore, the legal regulations which govern the prerogatives that the creator has concerning the protected … 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

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

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

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

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

Conundrum behind registrability of GUIs as industrial designs in India

Graphical User Interface (GUI) refers to icons, windows, and/or menus to offer a mechanism to interact with electronic devices visually. There has been quite a bit of debate around the registrability of GUIs under industrial design law in India. While the Designs Act, 2002, recognised protection for GUIs, the Indian Patents Office has been reluctant … 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

OXFORD UNIVERSITY’S IP PROVISIONS UNDER THE MICROSCOPE: OXFORD UNIVERSITY INNOVATION V OXFORD NANOIMAGING LIMITED [2022]

Introduction In the recent decision of the UK Patents Court in Oxford University Innovation v Oxford Nanoimaging Limited [2022] EWHC 3200 (Pat), the Court was asked to consider whether UK legislation protecting consumers from unfair contract terms applied to a contract made between Oxford University and a DPhil (doctorate) student. The Court held that the legislation in … Continue Reading

Free Speech, Chatting About Friends, Kraken/Crackin’ On AI, & Thinking About Fred & Ginger: Generated Content, Amici Curiae, & A Case About Jack Daniels That Dances Around Trademark Issues And Leaves Some Things To Chew On

Lots of people are talking about ChatGPT. Some, like those at Microsoft, see it as a valuable tool to be integrated into their products and platforms; indeed, one of its lawyers thought that the answer provided by ChatGPT to his legal question “sounds like a pretty good lawyer 😉.” But others are wondering whether we … 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

Can Trademark Applications and Administrative Proceedings Subject a Foreign Applicant to Service or Jurisdiction in Court Proceedings in the U.S.?

Suppose that you are a foreign applicant who either files a trademark application, opposition proceeding, or cancellation proceeding with the USPTO.  Can this act of filing subject the foreign applicant to service of process or specific or personal jurisdiction in court proceedings in the U.S.?  The answer is YES! as to service of process if … Continue Reading

QR codes with company logos can be a recipe for disaster – or a patent lawsuit

Say your company wants to run a new advertising campaign that includes a QR code for people to scan for additional information about your products or services. Not only that, but your creative team decides to go a step further and include your company logo in the middle of the QR code. You launch your … Continue Reading

Parmesan or Parmigiano Reggiano? The answer is more complicated than just Geographical Indication

One of the ways that a “Geographical Indication”, or a “GI” can be protected in Australia is by registration of a ‘certification trade mark’. Certification trade marks are a specific type of trade mark registration designed to identify goods or services that meet certain standards or hold certain characteristics, including (but not limited to) goods … Continue Reading

SECONDS & LEFTOVERS AFTER THANKSGIVING: Cleaning Up & Emptying Out The IP Fridge

The American holiday of Thanksgiving is tradition-laden and is celebrated as much for the leftovers after that November Thursday as it is for the turkey on that day, at least according to the US Department of Agriculture.  Indeed, Americans “idolize Thanksgiving left overs,” and the “[t]he overstuffing of America’s fridges has become something of a … 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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