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F-*-C-T – U.S. SUPREME COURT STRIKES DOWN BAN ON REGISTRATION OF IMMORAL OR SCANDALOUS MARKS

By: John Nading The U.S. Supreme Court issued its most recent decision yesterday picking away at the same clause of the Lanham Act, Section 2(a), 15 U.S.C. § 1052(a), and this time finding that the United States Patent and Trademark Office’s (PTO) prohibition on the registration of “immoral” or “scandalous” marks is a violation of … Continue Reading

Q&A SESSION WITH UK ADVERTISING STANDARDS AUTHORITY (ASA) CHIEF EXECUTIVE GUY PARKER

By: Claire Sng I had the rare opportunity last week to put some questions directly to Guy Parker, the ASA’s Chief Executive, during a Q&A session at an industry conference on Advertising and Marketing Law. I asked two questions relating to influencers and transparency of social media posts. This clearly remains a critical issue for … Continue Reading

PRIZE PROMOTIONS AROUND THE WORLD: LAUNCH OF NEW EDITION

The fourth edition of DLA Piper’s popular Prize Promotions Around the World online guide is now available.  The guide has been fully updated and also includes four new jurisdictions, to bring the total coverage to 39 jurisdictions. Prize promotions (including promotional sweepstakes and skill competitions) remain a hugely popular marketing tool used globally by organisations … Continue Reading

WILL COMBATTING THE SALE OF COUNTERFEIT GOODS AT BIG MARKETPLACES IN POLAND BECOME EASIER? WHAT IS THE CURRENT ENFORCEMENT PRACTICE IN THE CZECH REPUBLIC – THE SOURCE OF THE LANDMARK DELTA CENTER CASE?

By: Aleksandra Baczykowska (DLA Piper Poland), Jan Metelka (DLA Piper Czech Republic) At the moment in Poland entities that facilitate infringements by renting properties and those offering other services used to infringe trademark rights may be held liable. However, in the next few years, the practice of Polish courts with respect to the liability of … Continue Reading

POLAND – TRADEMARKS QUICKER, STRONGER, BROADER

By: Krystian Maciaszek  New Polish regulation supports the trademark owners in execution of their rights The recent amendment of the Polish Industrial Property Law, which has now entered into force, introduces significant changes to trademark regulations. In some areas it improves, strengthens and expands protection and in others it offers some surprising solutions, particularly in … Continue Reading

FOURTH ESTATE PUBLIC BENEFIT CORP. V. WALL-STREET.COM: WHEN CAN A COPYRIGHT CLAIMANT SUE FOR INFRINGEMENT? SUPREME COURT SAYS NOT UNTIL THE COPYRIGHT HAS BEEN REGISTERED

By: Andrew L. Deutsch and Tamar Y. Duvdevani On March 4, 2019, the United States Supreme Court decided an important issue of copyright law that had divided federal courts for years. In Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, the question was: when can a copyright claimant sue for infringement – as soon as it files … Continue Reading

SOUND IDENTITIES: BACK IN VOGUE FOR CORPORATE REBRANDING AND BRAND REFRESHES

By: Melinda Upton, Nicholas Boyle, Jessie Buchan, Lucy Meadley and Valiant Warzecha Businesses are constantly looking for an extra dimension that will allow their brand to cut through the saturation of the modern world. Increasingly, corporate re-brands or brand refreshes are including bespoke musical themes known as ‘sound identities’ or ‘audio brands’ to create a … Continue Reading

UK – NEW CMA GUIDANCE FOR INFLUENCERS AND COMMITMENTS SECURED WITH PARTICULAR INDIVIDUALS

By: John Wilks, Claire Sng and Sophie Anim Background The UK’s Competition and Markets Authority has announced, following its investigation (see our earlier article available here), that it has secured commitments from 16 social media influencers about how they post online (see link to CMA press release here). The influencers, including singer Rita Ora and … Continue Reading

CONSUMER HAS STANDING TO OPPOSE COMPANY’S RAPUNZEL TRADEMARK FOR DOLLS AND TOY FIGURES BEFORE U.S. TRADEMARK TRIAL AND APPEAL BOARD

By: John M. Nading, Ashley H. Joyce, and Devika Persaud  In a sign of a potentially liberalizing trend for standing at the U.S. Trademark Trial and Appeal Board, the Board recently ruled that a consumer had standing to oppose a company’s application for the trademark RAPUNZEL for dolls and toy figures.  Curtin v. United Trademark … Continue Reading

WORD FROM THE INDUSTRY’S MOUTH

By Tamar Duvdevani (NY), Airina Rodrigues (NY) and Michael Geller (Chicago) Interview with Melissa Schoffer Farber, SoulCycle’s Senior Director of Legal Affairs To describe New York-based SoulCycle as a company offering indoor cycling classes is a serious understatement.  While SoulCycle does tout 90 locations in the US and Canada, with a growing international presence, the … Continue Reading

MUSIC MODERNIZATION ACT

By: Ryan Compton and Thomas Holguin After many years of litigation and lobbying expenses, the battle over pre-1972 music rights has finally been ended.  On October 11, 2018, President Trump signed the Music Modernization Act (“MMA”), legislation that purports to provide additional protection for song writers and publishers, as well as to provide a clearer … Continue Reading

UK ADVERTISING CODE (CAP CODE): RULES CHANGES AND FURTHER CONSULTATION ON THE USE OF DATA FOR MARKETING

By John Wilks, Claire Sng and Ella Castle In the wake of GDPR, the UK’s Committee of Advertising Practice has amended the CAP Code to introduce new rules on the use of data for marketing. It has also launched a consultation on potential further rule changes relating to child marketing data and prizewinners. BACKGROUND As … Continue Reading

UK TRADEMARK REFORMS: IMPLEMENTING THE EUROPEAN TRADEMARK DIRECTIVE IN 2019

By Désirée Fields (Legal Director, London) and Yannick Aaron Zirnstein (Referendar/Trainee Lawyer, Cologne) Important changes to UK trademark law will come into effect on 14 January 2019 in order to implement the European Trademark Directive 2015. While some of the changes are minor in the nature, others are quite significant or even brand new. The … Continue Reading

UK – NEW ASA GUIDANCE FOR INFLUENCERS

By John Wilks and Claire Sng Background The ASA has this week published new guidance for influencers about how to make their ads clear (see link here “Guidance”). This Guidance follows the ASA’s call for evidence in March 2018. This is a hot topic at the moment with: The European Commission having just published a report about … Continue Reading

SCOTCH WHISKY AND CORNISH PASTIES: WHAT DOES A HARD BREXIT MEAN FOR GEOGRAPHICAL INDICATIONS?

By Désirée Fields and Sam Mitchell Geographical Indications (GIs) are signs used on products in order to inform consumers about a product’s geographical origin and a quality, characteristic or reputation of the product linked to its place of origin. GIs such as Scotch Whiskey and Parmesan cheese, have generated significant value for EU farmers and … Continue Reading

DEAL OR NO-DEAL? IMPLICATIONS OF A NO-DEAL BREXIT FOR UK IP LAWS

By: Sam Mitchell THE UNITARY PATENT (UP) AND UNIFIED PATENT COURT (UPC) BACKGROUND This week, the UK Government released multiple technical notes detailing the intellectual property implications of a no-deal Brexit for exhaustion of rights, patents, trademarks and designs, and copyright. A few months ago, the idea of a no-deal Brexit was only entertained as … Continue Reading

DEAL OR NO-DEAL? IMPLICATIONS OF A NO-DEAL BREXIT FOR UK IP LAWS – EXHAUSTION RIGHTS

By: Sam Mitchell BACKGROUND This week, the UK Government released multiple technical notes detailing the intellectual property implications of a no-deal Brexit for exhaustion of rights, patents, trademarks and designs, and copyright. A few months ago, the idea of a no-deal Brexit was only entertained as a highly unlikely, ‘worst-case scenario’. The following four notes … Continue Reading

DEAL OR NO-DEAL? IMPLICATIONS OF A NO-DEAL BREXIT FOR UK IP LAWS – PATENTS

By: Sam Mitchell PATENTS BACKGROUND This week, the UK Government released multiple technical notes detailing the intellectual property implications of a no-deal Brexit for exhaustion of rights, patents, trademarks and designs, and copyright. A few months ago, the idea of a no-deal Brexit was only entertained as a highly unlikely, ‘worst-case scenario’. The following four … Continue Reading

DEAL OR NO-DEAL? IMPLICATIONS OF A NO-DEAL BREXIT FOR UK IP LAWS – TRADEMARKS

By: Sam Mitchell TRADEMARKS AND DESIGNS BACKGROUND This week, the UK Government released multiple technical notes detailing the intellectual property implications of a no-deal Brexit for exhaustion of rights, patents, trademarks and designs, and copyright. A few months ago, the idea of a no-deal Brexit was only entertained as a highly unlikely, ‘worst-case scenario’. The … Continue Reading

DEAL OR NO-DEAL? IMPLICATIONS OF A NO-DEAL BREXIT FOR UK IP LAWS – COPYRIGHT

By: Sam Mitchell BACKGROUND This week, the UK Government released multiple technical notes detailing the intellectual property implications of a no-deal Brexit for exhaustion of rights, patents, trademarks and designs, and copyright. A few months ago, the idea of a no-deal Brexit was only entertained as a highly unlikely, ‘worst-case scenario’. The following four notes … Continue Reading

FEDERAL CIRCUIT CREATES CIRCUIT SPLIT ON USPTO RECOVERY OF ATTORNEYS’ FEES REGARDLESS OF PREVAILING PARTY

By: John Nading, Ashley Joyce, and Devika Persaud In a 7-4 en banc decision last Friday, July 27, the U.S. Federal Circuit Court of Appeals ruled that language in the Patent Act does not allow the USPTO to recover its attorneys’ fees regardless of which party prevails in a district court litigation.  NantKwest, Inc. v. … Continue Reading
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