Tag: Trademarks

CANNABIS AND CANADA

Recreational cannabis became legal in Canada under the Canadian Cannabis Act on October 17, 2018 and sales have begun. Prior thereto, only medical marijuana was available in Canada. The Canadian Trademarks Act has not been amended in any way in respect of the sale and promotion of recreational cannabis in Canada. The law regarding registration … Continue Reading

Federal Circuit Establishes New Test for Trade-Dress Secondary Meaning

The United States Federal Circuit recently issued a precedential opinion addressing trade dress secondary meaning.  The decision establishes a six-factor test to determine whether trade-dress acquired secondary meaning and clarifies a variety of other, related matters. Converse appealed a final determination of the International Trade Commission (“ITC”) that Converse’s U.S. trademark number 4,398,753 (“the ‘753 … Continue Reading

“Liquor Before Beer, You’re In The Clear… Beer Before Wine, You’ll Be Fine,” and So On: “Confusing” Advice For The Reveling Tippler & Registering Trademarks

The relationship of wine, beer, and spirits has often proved complicated and confusing for the tippler, regardless of country.  There are old saws that many repeat, and report on, that say things like “Beer Before Liquor, Never Sicker; Liquor Before Beer, You’re In The Clear” and “Wine Before Beer Leaves You Queer, But Beer Before … Continue Reading

Russian IP Court compelled domain name registrars to remove illegal content reported by trademark holders

On 4 July 2018, Russian IP Court rendered a landmark judgment in case No. A40-132026/2017. Under the merits of the case, LLC Azbuka Vkusa (trademark holder) sued LLC Registrator R01 (prominent domain registrar) seeking to cease delegation of the disputed domain name. It was apparent that the claimant’s trademark AZBUKA VKUSA was infringed in the domain … Continue Reading

Nothing beats a good TM LWYR – Nike’s questionable LDNR campaign

A July 2018 decision of the UK Intellectual Property Enterprise Court (IPEC) appears to have put paid to Nike’s recent “Nothing beats a Londoner” ad campaign. The case highlights, with hindsight, a perhaps regrettable commercial/legal decision by the sports giant, whilst also demonstrating the usefulness of the IPEC as a means of speedy and effective … Continue Reading

Clarifications on resolution of non-use disputes against bankrupt trademark holders

On March 21, 2018, the Russian Supreme Court published its Decision in case No. A55 5711/2014, which may have a dramatic impact on resolution of trademark non-use disputes. Under the merits of the case, Heineken filed a non-use claim against Samarskiy Vodochnyi Zavod based on its failure to use the trademark Volzhskaya Okhota for 3 consecutive years. … Continue Reading

Legal Risks Abound as the World Cup Kicks Into Gear

As with any major event, the FIFA World Cup presents an attractive marketing opportunity for brands to connect with consumers around the world. The World Cup is a particularly hot ticket for marketers because it only occurs once every four years and is followed closely by fans worldwide. It also helps that soccer (err … … Continue Reading

WILL THERE BE TRADEMARK TROLLS IN CANADA OR ARE THEY ALREADY HERE?

The Canadian Trademarks Act amendments, which are allegedly coming into force in early 2019, include the removal of the requirement that a trademark applicant declare that it has been using its trademark before it files the application or before registration in Canada. The amendments are meant to bring Canada’s laws in line with international treaties. The … Continue Reading

NCAA Obtains Injunction Over “March Madness” and “Final Four” Trademarks

The U.S. District Court for the Southern District of Indiana sided with the National Collegiate Athletic Association (NCAA) and awarded a permanent injunction against game developer Kizzang Inc. (Kizzang) over a mobile and online game that infringed the NCAA’s trademarks “March Madness” and “Final Four.” Background The NCAA administers inter-collegiate sports across the United States … Continue Reading

Fast-track trademark and patent registration has become available in Russia

Recently Rospatent officially launched a service for fast-track registration of trademarks and patents. The fast-track option has become available for those applicants who ordered and payed an official trademark search report in Rospatent in respect of all 45 Nice classes. The official fee for this service is EUR 1 500 (RUR 94 400), the term is 10 … Continue Reading

Trade Secrets as Part of Your IP Portfolio: The Case of Col. Sanders

Trade secrets, together with patents, trademarks, and copyrights, are one of the four main types of intellectual property.  Unlike the three other types of IP, trade secrets are never made public.  Trademarks and service marks are obtainable only through public use that creates an association between the mark and the origin of specific goods or … Continue Reading

Registration of Mark “THEZARA” for Motel Services Invalidated Based on the Mark “ZARA” for Clothing – A Case Study

Representing our client Inditex S.A. (“Inditex”), owner of the famous fashion brand “ZARA,” Lee International obtained a favorable decision in its invalidation action against the registered mark “THEZARA” for motel and hotel services. Facts Lee International filed an invalidation action against the registered mark “THEZARA” for “motel, hotel,” etc., on behalf of Inditex.  The invalidation … Continue Reading

Tomorrow Is Yesterday: Today’s Cases Boldly Going Where Our Blogs Have Gone Before

Sometimes blogging topics are hard to come by.  It is often difficult because, as a sage once noted in discussing the search for The Ultimate Computer, one wants to do one’s best, but something like creativity “doesn’t work on an assembly line basis. … You can’t simply say, today I will be brilliant,” insightful, informative … Continue Reading

Can Similar Trademarks Coexist Peacefully?

Suppose that you want to register a trademark that identifies a source of goods or services for your business.  You file a federal trademark application with the U.S. Patent and Trademark Office.  Subsequently, you receive an Office Action from the U.S. Patent and Trademark Office that initially refuses registration of your mark based on a … Continue Reading

Korean Patent Court Finds: Use of Outback motel mark unfairly competes with mark for restaurant services

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

“EACH DAY HAS A COLOR, A SMELL…”: Searching For New Trademark Worlds

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

Can Trademarks Related to Cannabis be Protected?

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

Obtaining Statutory Damages for Trademark Infringement – A Cross Border Approach under the Trademark Act of the Republic of Korea

** 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

“…as best as your interests don’t conflict with mine”: Lawyers Fighting Over Intellectual Property

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

CHANGING CANADIAN TRADEMARK LAWS – THE NEXT STEPS

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

Amendments to the pre-trial procedure for IP disputes

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

Can Trademarks Violate Free Speech?

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

Matal v. Tam – Disparaging Trademarks are Registrable

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
LexBlog