Category: Trademarks

1
Fashion Law – December 2018 Edition
2
USPTO Announces Final Rule Changing Claim Construction Standard in Inter Partes Review, Post-Grant Review and Covered Business Method Patent Proceedings
3
Descriptive Character and Geographical Origin: Bad News for the Souvenir Industry
4
A No Deal Brexit – how will trade marks and designs look?
5
Blockchain Can Change Everything: Even Trademark Transactions
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New parallel importation laws in Australia
7
Australian liquor company may not get off scot(ch) free
8
Chocolate Slab-Gate
9
Parallel importation law is set to change
10
Thunder Road toasts success in “Pacific Ale” case again (Stone & Wood’s appeal dismissed)

Fashion Law – December 2018 Edition

“People will stare. Make it worth their while.” – Harry Winston

Welcome to the latest edition of Fashion Law. In this edition we review the Australian Government’s measures to tackle modern slavery, a New Zealand trade mark opposition highlighting the importance of trade mark watching services, superannuation payments for full time, part time or casual workers, protecting brands in international markets, and the changes to parallel importation laws.

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USPTO Announces Final Rule Changing Claim Construction Standard in Inter Partes Review, Post-Grant Review and Covered Business Method Patent Proceedings

The United States Patent and Trademark Office is publishing a final rule revising the claim construction standard used by the Patent Trial and Appeal Board (the “Board”) in inter partes review, post-grant review, and covered business method patent review proceedings.  The Board will no longer interpret claims under the broadest reasonable interpretation standard and will instead use the claim construction standard enunciated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and its progeny and followed by federal courts and the United States International Trade Commission (“ITC”).  The changes to the claim construction standard will only apply to proceedings in which a petition is filed on or after the effective date of the final rule.

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Descriptive Character and Geographical Origin: Bad News for the Souvenir Industry

If you are one of those intellectual property lawyers that likes to tell brand stories while travelling, this post is for you.

Last September, the European Court of Justice (ECJ) dismissed the appeal of the German Souvenir Federation (Bundesverband Souvenir), which had filed an invalidity action based on the descriptive character of the term “Neuschwanstein” (the name of a beautiful castle located in southwest Bavaria, Germany). The appellant argued that the mark may be used in trade to designate the geographical origin of the goods and services concerned (handbags, clothing, soft drinks, jewelry, etc.).

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A No Deal Brexit – how will trade marks and designs look?

UK Government issues guidance on IP matters if there is no deal struck

Over two years after the UK voted to leave the EU, there is an increasingly likely possibility that the UK will leave the EU in March 2019 without a deal agreed (although negotiations continue).  As a result, the technical guidance notes published on 24 September 2018 give businesses, brand owners and designers much needed insight into how such a scenario will look.

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Blockchain Can Change Everything: Even Trademark Transactions

K&L Gates IP Partner, Susan Kayser, co-wrote the following article published in the American Bar Association.

Key issues for many brand owners are proving use of a trademark in commerce, maintaining the integrity of the brand, and combatting counterfeits. Blockchain—by its very nature—can efficiently provide the secure, reliable, and permanent records necessary to prove up genuine trademark use and genuine products. A secure database, spread across multiple computers, with the same record of all transactions, is ideal for tracking trademark transactions, as well as for eliminating paperwork and speeding up transactions.

A trademark and a blockchain have a complementary nature: a trademark acts as a source identifier, and a blockchain can validate a source. Providing trademark owners with a permanent, time-stamped, and secured record of information that is hosted on a peer-to-peer network, blockchain has the potential to transform trademark transactions. This article explores some of the myriad number of potential uses of blockchain for trademark transactions, including in establishing, licensing, and enforcing trademark rights.

Click to read the full article.

New parallel importation laws in Australia

Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 receives Royal Assent on 24 August 2018

The proposed changes to parallel importation law that we blogged about in January 2018 and May 2018 have become law.

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Australian liquor company may not get off scot(ch) free

Proceedings recently commenced in the Federal Court of Australia by the Scotch Whisky Association (SWA) serve as a reminder of the ability to use the trade mark system to protect Geographical Indications (GIs) in Australia.  The use and protection of GIs in Australia will be of particular interest to followers of the Australian-European Union free trade negotiations, where GIs have been flagged by the European Union as a critical issue.

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Chocolate Slab-Gate

Waitrose has agreed to stop producing “copycat” chocolate slabs following an ongoing dispute with Hotel Chocolat.

Hotel Chocolat accused Waitrose of infringing its intellectual property rights in its distinctive curved shaped chocolate slab.  This was further reinforced when individuals were taking to Twitter to question whether Hotel Chocolat were actually producing the chocolate slabs for Waitrose.  Hotel Chocolat requested that Waitrose removed the offending chocolate slabs from sale.

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Parallel importation law is set to change

Bill introduced to Parliament that will pave the way for parallel importers in Australia.

Proposed laws favouring the parallel importation of goods are currently being considered by the Australian Parliament. The Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2018 (Bill) was introduced to the House of Representatives on 28 March 2018.

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Thunder Road toasts success in “Pacific Ale” case again (Stone & Wood’s appeal dismissed)

On 9 March 2018, Byron Bay brewery Stone & Wood lost an appeal in the Australian Full Federal Court of Appeal to Brunswick based brewer Thunder Road with respect to their respective uses of the word PACIFIC for their rival beers.

Stone & Wood sells craft beer, including its best-selling beer “Pacific Ale”. Thunder Road launched its “Thunder Road Pacific Ale” in 2015, which it renamed “Thunder Road Pacific” later that year following letters of demand from Stone & Wood.

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