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NO THANKSGIVING TURKEY FOR CAMPARI

By: Melinda Upton, Rohan Singh, and Anjali Narendra It is common practice for businesses to engage in trade mark licence agreements as a means to facilitate building brand awareness. However, the High Court of Australia’s refusal to grant special leave to appeal the Full Court of the Federal Court’s decision in Lodestar Anstalt v Campari America … Continue Reading

CHINA: SIGNIFICANT CHANGES TO DATA AND CYBERSECURITY PRACTICES UNDER PRC CYBERSECURITY LAW

By: Carolyn Bigg After a third deliberation, the Chinese government passed the new PRC Cybersecurity Law on 7 November 2016. The new law will come into force on 1 June 2017 and has significant implications for the data privacy and cybersecurity practices of both Chinese companies and international organisations doing business in China.… Continue Reading

RUBIK’S CUBE: ECJ DENIES PROTECTION FOR 3D TRADEMARK OF FAMOUS PUZZLE

By: Dr. Ulrike Grübler (Hamburg, Germany) The European Court of Justice (ECJ) has denied trademark protection for an existing EU registration of the famous puzzle known as Rubik’s Cube. Following a decision issued by the European Court of Justice (ECJ) on 10 November 2016, the judges annulled prior decisions of EUIPO and the General Court that … Continue Reading

THE LAW IN BLACK AND WHITE – IN THE UK THE DISTRIBUTION AND SALE OF “GREY” GOODS CAN BE A CRIMINAL OFFENCE

By: Richard Taylor and Alasdair Muller (United Kingdom) The English Court of Appeal has confirmed that, in the UK, the sale or distribution of trade mark goods outside an authority granted by the trade mark holder can constitute a criminal offence (R v C and others, applying Trade Marks Act 1994 (the “Act”) s92(1)*).  Possession with … Continue Reading

CHANGES ON THE ANALYSIS AND RECOGNITION OF SO-CALLED “HIGHLY RENOWNED” TRADEMARKS IN BRAZIL BY THE INPI || ALTERAÇÕES COM RELAÇÃO À ANÁLISE E RECONHECIMENTO DAS MARCAS DE ALTO RENOME NO BRASIL PELO INPI

By: Paula Mena Barreto, Diego Mattos Osegueda, and Manoela Quintas Esteves On October 18th, the National Industrial Property Institute (INPI) published Resolution INPI/PR 172/2016, to improve the analysis and recognition of so-called “highly renowned” trademarks in Brazil. The alterations brought by the new resolution were formulated based on the suggestions of associations involved in the industrial property … Continue Reading

WHEN IT COMES TO INTELLECTUAL PROPERTY, MILLINERS SHOULD TAKE OFF THEIR FASCINATORS AND PUT ON THEIR THINKING CAPS!

By Josephine Gardiner (Sydney) Australia’s best-known horse racing event, the Melbourne Cup is on today. The race is known to stop the nation… but that’s not all they’re stopping for! Floral frocks, feathers and fascinators – the event is a real life fashion show with its own catwalk known as ‘Fashions on the Field’. The … Continue Reading

IS YOUR CYBERSECURITY UPGRADE FDA REPORTABLE?

By: Rebecca Jones McKnight and Gail Hannah Javitt In today’s marketplace, technology evolves at a rapid rate, and must adapt to changing circumstances, such as threats to cybersecurity. For device companies, some types of modifications to devices post-market − potentially including cybersecurity-related changes − are reportable to the FDA. In particular, corrections to devices already in the field … Continue Reading

BACK TO THE FUTURE? FOREIGN INVESTMENT PROTECTION IN CUBA

By Emil R. Infante and Harout Jack Samra Few countries match the expropriatory model of revolutionary Cuba. Described by one scholar as the “largest uncompensated taking of American property by a foreign government in history,” the expropriations touched virtually every industry on the island.[1] The nearly 6,000 claims filed in the United States were valued by … Continue Reading

NEWLY LAUNCHED ONLINE COMPLAINT FORM IN CALIFORNIA BOOSTS INCENTIVE TO POST ACCURATE PRIVACY POLICIES

By: Jim Halpert and Anne Kierig Online businesses and those with mobile applications have a new incentive to post privacy policies that comply with the California Online Privacy Protection Act (CalOPPA).  California Attorney General Kamala Harris launched an online tool Friday through which people can report websites, mobile apps, and other online services that they … Continue Reading

A NEW PROVISION FOR TRADEMARK PARODY: IS IT A JOKE?

By Sara Balice and Elena Varese (Milan) A number of fashion players base their business on the very thin line running between tribute and misappropriation.  In this context, it is difficult to understand how quotations of well-known fashion trademarks made with humorous intent should be treated, especially as European Union legislation has not provided any … Continue Reading

ANN FORD AUTHORS CHAPTER ON INTERNATIONAL TRADEMARKS IN NEWLY PUBLISHED INTELLECTUAL PROPERTY HANDBOOK

The American Bar Association has published The Intellectual Property Handbook: A Practical Guide for Franchise, Business, and IP Counsel (Second Edition) which provides an overview of intellectual property (IP) law and practices around the world.  Ann Ford, a partner in the Washington, D.C. office of DLA Piper and chair of DLA Piper LLP (US)’s U.S. … Continue Reading

THE DIFFICULT BALANCE BETWEEN COMPARATIVE ADVERTISING AND TRADEMARK PROTECTION

By Farid Bouguettaya and Karine Disdier-Mikus (Paris) Have you ever compared products or services when contemplating a purchase? Companies, whenever they can, also strive to mark themselves out from their competitors to gain a competitive advantage and new clients.  In an internal market where competition is highly encouraged by the European Union, comparative advertising has … Continue Reading

DELETION OF THE “GRAPHIC REPRESENTATION” REQUIREMENT FOR TRADEMARKS: OPENING PANDORA’S BOX?

By Ulrike Gruebler (Hamburg) and Gaspard Debiesse (Paris) To stay ahead of the competition, players of the fashion industry have a permanent need to renew their communication strategies, including the use of new technologies and media.  “Sensory marketing”, the art of playing on the various senses of the customers (sound, smell, taste, touch, in addition, … Continue Reading

WHOSE NAME IS IT ANYWAY?

By Ruth Hoy and Emily Leach (London) Designing under your own name is a natural, even intuitive choice for many designers and is an established practice in the fashion industry.  To protect their brand, designers often register their own name as a trade mark.  Associating your own name with your designs has many advantages, but … Continue Reading

THE RIGHT OF A TRADEMARK OWNER TO ACT AGAINST PREPARATORY ACTS OF INFRINGEMENT

By Justyna Wilczynska-Baraniak and Aleksandra Baczykowska (Warsaw) In the fashion industry, tags and labels are a key element of the end product.  Therefore, the change of Regulation 2015/2424 and Directive 2008/95/EC of 16 December 2015 is an important step in combating trademark infringement.  By deploying these preventive measures, a trademark infringement may be interrupted at … Continue Reading

THINK BEFORE YOU LINK – CJEU CONFIRMS THAT LINKING TO FREELY AVAILABLE BUT UNAUTHORISED CONTENT CAN INFRINGE COPYRIGHT

By Rahool Sarjua and John Cloke Following the string of cases on hyperlinking the CJEU has dealt with in recent years, the court has emphatically confirmed in its judgment in GS Media v Sanoma & Ors that hyperlinking to works that have been made available on the Internet without the authorisation of the copyright owner … Continue Reading

A VERY IMPORTANT DEVELOPMENT FOR BRAND PROTECTION TEAMS IN THE FIGHT AGAINST COUNTERFEIT – GRAB THE MOMENTUM

By Leonie Kroon and Anne Voerman (Amsterdam) When taking action against illegal fake goods, you are no longer limited to goods destined for the EU. The new EU trademark rules introduce the right to take action against all goods at EU borders even when they are in transit (Article 9(4) of Regulation (EU) 2015/2424, and … Continue Reading

SINGAPORE’S FIRST DATA PROTECTION ENFORCEMENT DECISIONS

By Scott Thiel and Carolyn Bigg Singapore’s Personal Data Protection Commission (PDPC) has just published its first enforcement decisions regarding the data protection obligations set out in the Personal Data Protection Act 2012 (PDPA) since they came into force in July 2014. While decisions have previously been published in relation to the “do not call’ register … Continue Reading

Updates to Korean Trademark Act Take Effect Today

By Ann K. Ford, Eunice R. Chung, and Ashley E. Green The Korean Intellectual Property Office (“KIPO”) has issued its first comprehensive amendment to the Korean Trademark Act in over two decades.  The changes will take effect today, and are part of Korea’s efforts to reform its intellectual property system.  From targeted changes with local … Continue Reading
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