Archives: Trademark and Copyright

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IF YOU CAN’T BEAT THEM, BLOCK THEM. SECTION 115A STRIKES AGAINST PIRACY WEBSITES, THIS TIME FOR THE MUSIC INDUSTRY

By Rohan Singh, Jessica Noakesmith and Brett Shandler Universal Music Australia Pty Limited v TPG Internet Pty Ltd [2017] FCA 435 (28 April 2017) (Universal Music) Last week in the Federal Court of Australia, over thirty internet service providers (ISPs) including TPG, Optus and Telstra were ordered to block access to the torrenting website KickassTorrents … Continue Reading

UNITED STATES SUPREME COURT SIDES WITH COPYRIGHT OWNER IN STAR ATHLETICA CASE

By Tamar Duvdevani On March 22, 2017, in a 6-2 decision authored by Justice Thomas, the United States Supreme Court ruled that the designs on Varsity Brands’ cheerleading uniforms are eligible for copyright protection.  The crux of this decision relates to the fact that the United States Copyright Act treats the copyrightability of “useful articles” … Continue Reading

UPCOMING CHANGES IN REQUIREMENTS FOR SERVICE PROVIDERS TO BENEFIT FROM DMCA SAFE HARBOR: CONSIDER THESE KEY STEPS

By: Jeffrey D. Aronson, Jim Halpert, Victoria Lee, Mark C. Lehberg, Eduardo J. Blanco If you maintain a website or service where you make content available to others, you probably have (and should have) an agent registered with the US Copyright Office to receive notices alleging copyright infringement.  Last week, the Copyright Office adopted a … Continue Reading

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

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

Rubik's CubeBy: 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

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

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

ANNOUNCING THE LATEST EDITION OF OUR GUIDE TO GOING GLOBAL – INTELLECTUAL PROPERTY AND TECHNOLOGY

As business grows more global, the challenge for in-house counsel seeking to comply with the shifting landscape of IPT laws in all jurisdictions where they operate is intensifying. We designed our complimentary Guide to Going Global to help you meet that challenge head on. Inside this guide, we outline crucial aspects of IP and Technology … Continue Reading

Are Your TMs Ready for the Change?

By Dr. Ulrike Gruebler   European trademark law is currently undergoing the most fundamental changes since the introduction of the European Community trademark system 20 years ago. In late 2015, the European Parliament approved a reform package consisting of an amended European Union Trademark Regulation (Regulation (EU) 2015/2424) and a new Trademarks Directive (Directive (EU) … Continue Reading

Trump Has A Legal Problem. And We Don’t Mean The Donald.

By Tamar Duvdevani Last month, in our piece about the pending Supreme Court case Varsity Brands, Inc. v. Star Athletica, LLC, we took a close look at the copyright protection afforded to useful articles (https://www.remarksblog.com/2016/05/cheerleading-uniforms-and-copyright-uniformity-when-is-a-useful-articles-artistic-aspects-amenable-to-copyright-protection/).  The Star Athletica case relates to copyright infringement of cheerleading uniforms, and, in particular, the geometric designs that appear on … Continue Reading

Brexit News: What next for European trade mark protection in the light of the UK referendum result?

By Ruth Hoy With the overnight referendum result in the UK, and the UK voting to leave the EU, a number of our clients are asking what the effect will be on their European Union Trade Mark (“EUTM”) Registrations, whether they will continue to offer protection in the UK, and/or whether they should be contemplating new … Continue Reading
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