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 new set of rules governing the registration and maintenance of designated agent information that will require changes starting December 1, 2016.
Continue Reading UPCOMING CHANGES IN REQUIREMENTS FOR SERVICE PROVIDERS TO BENEFIT FROM DMCA SAFE HARBOR: CONSIDER THESE KEY STEPS

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 generate greater protection and preservation of intellectual property and to meet international obligations derived from the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement).
Continue Reading MYANMAR: DRAFT TRADE MARK LAW PROGRESS

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 LLC [2016] FCAFC 92 (Lodestar Anstalt v Campari America LLC), is a reminder that trade mark licensors must retain a degree of ‘actual control’ over a licensee’s use of their trade mark in order to avoid removal for non-use.
Continue Reading NO THANKSGIVING TURKEY FOR CAMPARI

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 had confirmed the registration of the 3D trademark. The judges held that the trademark involved a technical solution and that not only visible but also invisible functional elements have to be taken into account (Judgement of 10 November 2016, C-30/15 P).
Continue Reading RUBIK’S CUBE: ECJ DENIES PROTECTION FOR 3D TRADEMARK OF FAMOUS PUZZLE

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 a view to sell/distribute such goods is also a criminal offence. 
Continue Reading THE LAW IN BLACK AND WHITE – IN THE UK THE DISTRIBUTION AND SALE OF “GREY” GOODS CAN BE A CRIMINAL OFFENCE

By: Paula Mena BarretoDiego 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 area, such as the Working Group on Trademarks of the Brazilian Association of Industrial Property Agents (ABAPI).
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 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 dress etiquette for the event requires ladies to wear a headpiece, usually a one-off piece of millinery. However, such ‘one-off’ pieces are becoming harder to find as millinery falls victim to copying.
Continue Reading WHEN IT COMES TO INTELLECTUAL PROPERTY, MILLINERS SHOULD TAKE OFF THEIR FASCINATORS AND PUT ON THEIR THINKING CAPS!