Archives: Trademark and Copyright

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EUGC RAISES THE BAR FOR ACQUIRED DISTINCTIVENESS

By DLA Piper on January 25, 2017 Posted in Europe, Trademark and Copyright

By: Désirée Fields (London, UK) and Melissa Brown (Birmingham, UK) In a decision of significant impact on brand owners, the European Union General Court (EUGC), has held that acquired distinctiveness for European Union trade marks (EUTMs) must be proven throughout all EU Member States rather than in relation to a substantial part or the majority … Continue Reading

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

By DLA Piper on December 12, 2016 Posted in DMCA, Trademark and Copyright

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

MYANMAR: DRAFT TRADE MARK LAW PROGRESS

By DLA Piper on November 29, 2016 Posted in Asia, International, Trademark and Copyright

By: Melinda Upton, Rohan Singh, and Anjali Narendra Myanmar’s Draft Trade Mark Law is expected to be passed in 2017. This signals substantial changes to the current process which is based on common law and common practice rather than statute. The Draft Law intends to import structure and certainty into Myanmar’s trade mark regime to … Continue Reading

NO THANKSGIVING TURKEY FOR CAMPARI

By DLA Piper on November 28, 2016 Posted in International, Trademark and Copyright

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

By DLA Piper on November 16, 2016 Posted in International, Trademark and Copyright

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 DLA Piper on November 15, 2016 Posted in Fashion, International, Trademark and Copyright

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 DLA Piper on November 8, 2016 Posted in International, Trademark and Copyright

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 DLA Piper on October 31, 2016 Posted in Australia, Fashion, International, Trademark and Copyright

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

BREXIT: IMPACT ON TRADEMARKS AND DESIGNS

By DLA Piper on October 19, 2016 Posted in Europe, International, Trademark and Copyright

By: Désirée Fields and Dr. Ulrike Gruebler Following the UK’s vote to leave the European Union, we consider the potential implications for trademarks and designs, an area that is extensively harmonized through legal concepts such as the EU trademark and the Community design.… Continue Reading

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

By DLA Piper on October 17, 2016 Posted in Fashion, Trademark and Copyright

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

By DLA Piper on October 10, 2016 Posted in DLA Piper, IP Roundup, Miscellaneous, Trademark and Copyright

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

U.S. SUPREME COURT TO HEAR TRADEMARK CASE ON THE SLANTS

By DLA Piper on October 7, 2016 Posted in Trademark and Copyright

By: Eunice Chung and Naomi Abraham (Washington, D.C.) The U.S. Supreme Court agreed to decide whether the disparagement provision of the Lanham Act is facially invalid under the Free Speech Clause of the First Amendment. This specific case, Lee v. Tam, focuses on The Slants, a rock band that was denied a trademark registration on … Continue Reading

THE DIFFICULT BALANCE BETWEEN COMPARATIVE ADVERTISING AND TRADEMARK PROTECTION

By DLA Piper on October 7, 2016 Posted in Advertising, Fashion, INTA, Trademark and Copyright

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 DLA Piper on September 27, 2016 Posted in Fashion, INTA, Trademark and Copyright

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 DLA Piper on September 22, 2016 Posted in Fashion, INTA, Trademark and Copyright

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 DLA Piper on September 20, 2016 Posted in Fashion, International, Trademark and Copyright

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 DLA Piper on September 1, 2016 Posted in Asia, International, Trademark and Copyright

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

By DLA Piper on August 2, 2016 Posted in Technology, Trademark and Copyright

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 DLA Piper on July 8, 2016 Posted in International, Trademark and Copyright

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 DLA Piper on June 27, 2016 Posted in Copyright, Fashion, Trademark and Copyright

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 DLA Piper on June 24, 2016 Posted in Europe, Trademark and Copyright

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

TOOLS TO PREVENT COUNTERFEIT GOODS FROM ENTERING THE UNITED STATES

By DLA Piper on June 17, 2016 Posted in Counterfeiting, Trademark and Copyright

By Ann K. Ford and James Stewart (Washington, DC) One of the frequently noted yet seldom discussed benefits of trademark and copyright registration in the United States is the ability to record those registrations with US Customs and Border Protection (CBP). Recording US trademark and copyright registrations with CBP can provide fashion brands with valuable … Continue Reading

The EU Trademark Reform

By DLA Piper on May 24, 2016 Posted in Client Alert, Europe, International, Trademark and Copyright

European trademark law is currently undergoing the biggest reform since the introduction of the Community trademark system in 1996. On 15 December 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) 2015/2436). This bundle of new laws, referred … Continue Reading

Pre-order your copy of the inaugural edition of DLA Piper’s Asia-Pacific Trademark Guide

By DLA Piper on May 23, 2016 Posted in DLA Piper, INTA, International, Trademark and Copyright

We will soon be releasing the DLA Piper Asia Pacific Trademark Guide, a comprehensive review of trademark laws and key tips covering these 18 countries: Australia, Cambodia, China, Hong Kong, India, Indonesia, Japan, Korea, Laos, Macau, Malaysia, Myanmar, New Zealand, Philippines, Singapore, Taiwan, Thailand and Vietnam. Covering the complete brand life cycle, this user-friendly guide … Continue Reading