Tag: Case Studies

BUSINESSES BEWARE: DEPRECIATION IN GOODWILL CLAIMS NOT BOUND BY INDUSTRY LINES

The Federal Court of Canada (the “FCTD“) recently released Toys “R” Us (Canada) Ltd v Herbs “R” Us Wellness Society, in which it considered whether a cannabis company, Herbs “R” Us Wellness Society (“Herbs R Us“), had breached Sections 20, 7(b) and 22 of Canada’s Trademarks Act (the “Act“) with respect to claims of trademark … Continue Reading

Queen Anne’s Revenge, Indeed!: Copyright Conundrums, Sovereign States, and IP Piracy

“One man’s legally sanctioned privateer is another man’s pirate.”           [James Wadsworth, Global Piracy: A Documentary History of Seaborne Banditry (2019), at p. 8] We live in a time of contradictions and confusion, and today we aim to explore how some such tensions have manifested themselves in the area of intellectual property law. On the one … Continue Reading

A Recipe for Patent Protection: Are food products patentable?

In the past several years, the food and beverage space has seen an explosion of innovation—alternative meat products, plant-based dairy and protein alternatives, CBD- and collagen-infused everything, and functional foods and beverages and containing everything from pre/pro/post-biotics to nootropic and adaptogenic herbs, just to name a few. And many of these innovations have led to … Continue Reading

U.S. Supreme Court – Willfulness Is Not a Prerequisite for a Profit Award for Trademark Infringement

In its unanimous April 23, 2020 opinion in Romag Fasteners v. Fossil, Inc., the Supreme Court made clear once and for all that a successful trademark plaintiff is not required to establish that the defendant’s infringement was willful to be entitled to an award of the infringer’s profits. In other words, profits may be disgorged … Continue Reading

Compulsory Licensing in Russia in the view of COVID-19

Nowadays the sphere of healthcare is becoming one of the mostly discussed because of a mass spread of the coronavirus pandemic (also COVID-19). Confirmed cases of COVID-19 around the world have passed more than a 2.4 million. As the disease is continuing to surge the World Health Organization is warning that there are no specific … 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

Reviving a brand? A reminder to ensure it is put to genuine use

The case of Aiwa Co. Ltd v Aiwa Corporation is a useful reminder to brand owners, particularly those who are looking to revive a brand, of what amounts to “genuine use” of a registered trade mark. The case particularly considers whether the sale of second-hand goods by third parties in the UK can constitute genuine use of … Continue Reading

Can Appointment of Administrative Patent Judges be Unconstitutional?

For the Patent and Trial Appeal Board (“PTAB”), the Administrative Patent Judges (“APJs”) are appointed by the Secretary of Commerce in consultation with the Director of the United States Patent and Trademark Office.  For an inter parties review of a patent, three APJs conduct the instituted review and determine if claims of a patent are … Continue Reading

“Pirate Ships in Dangerous Waters!”

A recent decision of the Three-Member Court of Appeals of Komotini (Felonies Department), dated 19/11/2019, has been intensely debated by the national media as resulting to the first “real” prison sentence that has ever been imposed in our country to a website owner for illegally distributing copyright-protected content.  Although the judgement has not been published … Continue Reading

Joint authorship of copyright: UK Court of Appeal tears up the script

A dispute concerning the screenplay for the 2016 Hollywood biographical comedy “Florence Foster Jenkins” (FFJ) – a film about a tone-deaf New York socialite who labours under the delusion that she is a talented opera singer – has this month produced a Court of Appeal decision centering on the parties’ own adjustment to reality. Apart … Continue Reading

Supreme Court Settles Circuit Split on When a Plaintiff May Sue

The Supreme Court handed down a unanimous copyright decision in March 2019 with implications for anyone involved in a copyright dispute, as well as for marketers and brands that create and use copyrighted materials. In Fourth Estate Public Benefit Corporationv. Wall Street.com, LLC (Fourth Estate), the Court resolved a long-standing split among the circuits over the requirement … Continue Reading

Th-Inking About The Law: Tattoos Leaving Indelible Marks On Black-Letter Principles & Coloring Our Perspectives

Tattoos, one of the oldest art forms in the world, are all over the legal news in recent years.  The news runs the gamut from a tattooist suing a movie studio over replication of Mike Tyson’s facial tattoo in The Hangover II to artists looking to gaming companies for compensation for reproduction of tattoos appearing … Continue Reading

Stop the Insanity! Sports Trademarks Run Amok

Sports and sports teams have a long history with intellectual property law and, more specifically, trademarks.  Sports teams, colleges, and universities have long trademarked their names and logos, and have routinely and aggressively enforced those rights.  In 1988 Pat Riley, then the head coach of the National Basketball Association’s Los Angeles Lakers, applied for a … Continue Reading

Can Design Patents Be Limiting in Enforcement?

Suppose that you have an invention disclosure for a design of an article that you want to protect?  When you review the invention disclosure, you notice that the design is ornamental, for example a pattern, on an article such as a chair.  You draft and file a design patent application on the pattern described as … Continue Reading

Was Missguided Misguided? Kim Kardashian West Obtains $2.7 Million Judgment in Right of Publicity and Trademark Suit

A federal district court in California has awarded a $2.7-million default judgment to Kim Kardashian West in her lawsuit against a fast fashion online retailer that allegedly used her persona and likeness to sell its clothing, in part by repeatedly tagging her on Instagram and linking to the retailer’s e-commerce site. Kardashian West’s suit is … Continue Reading

The District of Delaware Holds Patent Description for Bacon Product Indefinite

An indefinite patent description will pass muster when pigs fly.  In HIP, Inc. v. Hormel Foods Corporation et al., C.A. 18-615-CFC (D. Del. June 24, 2019), the United States District Court for the District of Delaware held that a patent failed to meet the requirement of 35 U.S.C. § 112 that a patent’s description must … Continue Reading

TheLegalBay.gr: No Pirates allowed

In the framework of its efforts against online copyright piracy, the Hellenic Copyright Organization (“HCO”, Greek Acronym “OPI”) launched, on August 1st 2019, a new web portal, under the domain name “theLegalBay.gr”. The new website aims to be the place where online users can easily find web platforms available either solely in Greece or worldwide … Continue Reading

What’s Going On? Another Marvin Gaye Lawsuit Tests the Limits of Copyright Protection

Just when you thought it was over, another copyright infringement lawsuit involving a Marvin Gaye song is set for trial. The dust had barely settled on the infamous “Blurred Lines” case when a second suit, this time targeting world-famous pop star Ed Sheeran, took another step closer to trial. Similar to the prior case, the battleground being … Continue Reading

Application for the Chinese Translation of a Foreign Trademark as a Trademark with Knowledge of Likelihood of Confusion Considered in Bad Faith

Chinese (Mandarin) is the national language in Taiwan.  To expand the market in Taiwan, many foreign companies will select the Chinese translation or transliteration of their foreign brands as locally used brands (trademarks) so that the consumers in Taiwan may identify more easily.  However, in Chinese language, one character may have multiple pronunciations or meanings.  … Continue Reading

NO LONGER “FUCT” – SCANDALOUS MARK PROVISION STRUCK DOWN BY SUPREME COURT

What constitutes a “scandalous” trademark? The United States Patent and Trademark Office (USPTO) has been grappling with this question since the enactment of the 1905 Trademark Act, later codified in the 1946 Lanham Act, which forbids registration of any mark that “[c]onsists of or comprises immoral . . . or scandalous matter.” Since the creation of this provision, the USPTO has regularly rejected marks 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

Still Standing?: The Sometimes Rocky World Of Public Art

What distinguishes public art is the unique association of how it is made, where it is, and what it means.” —The Association for Public Art To many, the names “Rocky Balboa” and the “Italian Stallion” are as universal and front of mind as the names “Chuck Wepner” and the “Bayonne Bleeder” are regional and tucked … 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

Federal Circuit Reminds Us That Extrinsic Considerations Are Narrowly Construed in Trademark Matters

2018 saw a number of important trademark cases decided across the United States.  Two cases illustrated the similarities between genericness analysis and one of the likelihood of confusion factors considered by the Trademark Trial and Appeal Board (“TTAB”).  Royal Crown Co., Inc. v. The Coca-Cola Co., 892 F.3d 1358 (Fed. Cir. 2018) and Omaha Steaks … Continue Reading
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