By Ann K. Ford and Horace Lam 

China’s eagerly anticipated amendments to its trademark law come into force on May 1, 2014. This new legislation aims to modernize the trademark process, strengthen trademark enforcement and make trademark squatting and counterfeiting more difficult. But it can also yield opportunities for trademark hijackers.

Here are the Top 5 steps to take now to protect your trademarks: 

1. Do a trademark audit

The new law makes opposition difficult. It removes the opponent’s right to file a review against the China Trademark Office (CTMO)’s decision in an opposition if the initial opposition does not prevail. China’s application system is a purely first-to-file, unlike in the US. Any gaps in a portfolio could allow hijackers to acquire your marks.


Continue Reading 5 STEPS TO TAKE BY 5/1 TO PROTECT YOUR TRADEMARKS IN CHINA

By Melinda Upton and Rohan Singh

On 6 December 2013, the Full Court of the Federal Court of Australia dismissed an appeal by Australian Postal Corporation (Australia Post) and upheld the primary judge’s decision that “DIGITAL POST AUSTRALIA” is not deceptively similar to “AUSTRALIA POST” and therefore would not infringe.

Australia Post, which owns the “AUSTRALIA POST” trade mark, commenced proceedings against Digital Post Australia (DPA) after DPA announced that it would launch a digital mail box service under the trade mark “DIGITAL POST AUSTRALIA”. Australia Post was unsuccessful before the primary judge and appealed to the Full Court.

While the Full Court briefly considered the relevant class of consumers and the essential element of DPA’s mark, in forming their view the judges primarily engaged in a discussion of the expert evidence (by a “branding expert”) and survey evidence led by Australia Post.


Continue Reading Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153

By Ann Ford, Gina Durham and Ryan Compton

• Brand owners should prepare for the impending release of numerous new gTLDs – the first few of which will be open for registration soon, and


Continue Reading GTLD UPDATES FOR BRAND OWNERS FIRST NEW GTLDS DELEGATED, NON-LATIN GTLDS, A NEW PRODUCT TO DEFEND YOUR MARKS, CHANGES TO ICANN REGISTRY AGREEMENTS

By Max Wenger and Kai Tumbraegel

On 17 October the German Federal High Court (“BGH”) has submitted a request for a preliminary ruling to the European Court of Justice (“ECJ”) to clarify whether a bank may refuse to reveal the name and the address of a bank account holder with reference to the bank secrecy, if the payment for a purchase of counterfeiting goods has been settled via the respective bank account (BGH I ZR 51/12).


Continue Reading Germany/EU: European Court of Justice will decide on relationship between claim for information based on trademark law and bank secrecy

Reposted from Intellectual Property Magazine, September 2013

This article discusses how retail brand companies can protect their store layout, and provides effective tips for utilizing a unique store layout as a valuable asset and


Continue Reading Retail Value: DLA Piper’s Radiance W. Harris Explains How to Protect Your Store’s Layout

By Ryan Compton & James Stewart

The imminent launch of more than 1,400 new generic top-level domains (gTLDs) poses a major challenge to brand owners seeking to enforce and maintain control over the way their key trademarks appear in domain names. The domain ender “.com” is the most widely used of the current gTLDs, but “.net,” “.org” and “.edu” gTLDs are also prevalent. All of the current gTLDs are managed by the Internet Corporation for Assigned Names and Numbers (ICANN). On June 20, 2011, ICANN approved a plan to expand the universe of gTLDs to include virtually any string of characters, including trademark words (e.g., “.docs,” “.rocks,” “.world,” “.pepsi,” etc.).

To help brand owners exercise greater control over use of their trademarks, ICANN has developed the Trademark Clearinghouse (TMCH), which gives brand owners the first opportunity to obtain domain names incorporating their trademarks upon the launch of a new gTLD. Brand owners registered with the TMCH will receive notice when a third party registers a domain name incorporating their trademark. The third-party registrant is also notified of the brand owner’s rights in the mark.


Continue Reading New gTLDs & The Trademark Clearinghouse: Four Tips for Brand Owners

By James Stewart

 

IMPACT and the National Bar Association has named Radiance Harris one of its “Nation’s Best Advocates – 40 Lawyers Under 40.”  Radiance is an associate in the Trademark, Copyright, and Media practice group in Washington, D.C., as well as the manager for the firm’s premier intellectual property blog, Re:Marks on Copyright and Trademark.  This honor recognizes talented individuals, ages 40 and under, within the African American legal community who have achieved prominence and distinction, both professionally and philanthropically.  Selected nominees represent a cross-section of legal professionals: solo practitioners, government lawyers, judges, academics, corporate counsel, young elected officials, and lawyers using their juris doctor in innovative ways. 



Continue Reading Radiance Harris Named One of IMPACT and National Bar Association’s 2013 40 Lawyers Under 40

By John Wilks and Charles Harvey

UK IP legislation is changing.

First, the Enterprise and Regulatory Reform Act 2013 (which received Royal Assent on 25 April 2013), has just been published, and modifies UK copyright law (though not as drastically as some would have liked).

Secondly, the Government announced in the Queen’s Speech that it will be introducing an Intellectual Property Bill to make changes to the law of design and patents.


Continue Reading SIGNIFICANT CHANGES INTRODUCED AND PLANNED TO UK IP LEGISLATION

By Rebecca Kay and Charles Harvey

Fox .jpg

Background

The famous fox and boot logo was first used by Peal & Co, an English bootmaker. In 1964, Peal & Co sold the goodwill of its business and the use of its trademark to Brooks Brothers UK Limited (a subsidiary of the well-known US menswear group) and in 1965 it ceased trading.  Following the demise of the Peal & Co business, W.S Foster & Son Limited (a shoe retailer on London’s Jermyn Street), recruited an employee of Peal & Co and (apparently at the employee’s suggestion) commenced its own use of the fox and boot logo.  In 2005, Brooks Brothers opened a number of UK stores.  Having realized that some of Brooks Brothers’ shoes featured the fox and boot logo, W.S Foster brought proceedings against Brooks Brothers before the UK High Court.


Continue Reading BROOKS BROTHERS OUTFOXED