Category: Trademarks

1
Full Federal Court Decision Reaffirms That There Is No Infringement By Authorisation Under Australian Trade Mark Law
2
Board of Directors of the Dubai International Financial Centre (DIFC) Authority Issues IP Legislation Update
3
Registrability of Shape Marks and Technical Function of Complex Products: The Pirelli Case
4
Australia’s Greatest Liability: Parodic Fair Use or Copyright Infringement?
5
“All Aboard” As Guerlain Departs From the Norm: The General Court of the EU Finds Distinctive Character in Boat Hull Shaped Lipstick Packaging
6
Planet Plumbing Trade Marks Head Down the Drain
7
USPTO Proposes Rulemaking to Implement Provisions of the Trademark Modernization Act of 2020
8
Could You Be Using Your Trade Marks to Stop Unauthorised Resellers in the EU?
9
Trade Mark Re-filing and Bad Faith – Go Directly to Jail. Do Not Pass GO, Do Not Collect $200 – Part Two: General Court Ruling
10
British Amateur Gymnastics Association rolls and tumbles to trade mark enforcement against UK Gymnastics – UK Court of Appeal upholds trade mark infringement finding

Full Federal Court Decision Reaffirms That There Is No Infringement By Authorisation Under Australian Trade Mark Law

The Full Court of the Federal Court of Australia has reaffirmed that a registered trade mark can only be infringed by the primary user of a trade mark and there is no concept of authorisation of infringement recognised under Australian trade mark law.

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Board of Directors of the Dubai International Financial Centre (DIFC) Authority Issues IP Legislation Update

The Board of Directors of the Dubai International Financial Centre (DIFC) Authority recently issued the DIFC Intellectual Property Regulations (IP Regulations). The IP Regulations took effect on 5 July 2021 and were issued pursuant to the DIFC Intellectual Property Law, DIFC Law No. of 2019 (IP Law).

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Registrability of Shape Marks and Technical Function of Complex Products: The Pirelli Case

The CJEU has rendered its decision on the invalidity actions brought by Yokohama against the below shape mark filed by Pirelli. The mark represents a single groove of a tyre tread, covering “tyres, solid, semi-pneumatic and pneumatic tyres, rims and covers for vehicle wheels of all kinds, vehicle wheels of all kinds, inner tubes, wheel rims, parts, accessories and spare parts for vehicle wheels of all kinds“ in class 12.

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Australia’s Greatest Liability: Parodic Fair Use or Copyright Infringement?

Many companies and activists toe the line of trade mark and copyright infringement in the name of parody, satire and criticism. In Australia, the fair dealing copyright exception for the purpose of parody or satire had rarely been judicially considered. There have now been two recent cases considering the defence.

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“All Aboard” As Guerlain Departs From the Norm: The General Court of the EU Finds Distinctive Character in Boat Hull Shaped Lipstick Packaging

In what will be welcomed by innovative design brands, on 14 July 2021, the General Court of the EU handed down a decision annulling the EUIPO and Board of Appeal’s decisions that a mark filed by Guerlain lacked distinctive character. This decision emphasises that a distinctiveness assessment of a three-dimensional mark must be undertaken by reference to the specifics of common practice in the market for the relevant products.

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Planet Plumbing Trade Marks Head Down the Drain

The importance of ensuring trade mark registrations accurately reflect the marks in usage has been brought into sharp relief by the recent decision of a Delegate of the Registrar of Trade Marks in Planet Plumbing SW Works Pty Ltd v Green Planet Maintenance Pty Ltd [2021] ATMO 32.

The Hearing Officer directed that registrations for two “Planet Plumbing” logos be removed from the Register after the owner, Planet Plumbing SW Works Pty Ltd (PP) failed to defend against a non-use application by Green Planet Plumbing Pty Ltd (GPP) under section 92 of the Trade Marks Act 1995 (Cth) (the Act).

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USPTO Proposes Rulemaking to Implement Provisions of the Trademark Modernization Act of 2020

On 18 May 2021, the U.S. Patent and Trademark Office (USPTO) published a notice of proposed rulemaking concerning the Trademark Modernization Act of 2020 (TMA). The USPTO proposed to amend the rules to implement certain provisions of the TMA, as detailed below. The proposed new and amended rules:

  1. establish procedures and fees for ex parte expungement and reexamination proceedings
  2. provide nonuse grounds for cancellation before the Trademark Trial and Appeal Board (TTAB)
  3. establish flexible office action response periods, and
  4. amend the existing letter-of-protest rule to indicate that letter-of-protest determinations are final and nonreviewable.

Amendments are also proposed for the rules concerning the suspension of USPTO proceedings and rules governing attorney recognition in trademark matters. Finally, a new rule is proposed to address procedures regarding court orders cancelling or affecting registrations. The USPTO must receive written comments regarding these proposed rules on or before 19 July 2021.

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Could You Be Using Your Trade Marks to Stop Unauthorised Resellers in the EU?

In this internet age, where a brand can be damaged by a single, negative review going viral, never has it been more important for a brand owner to protect its image and reputation. The pandemic forced all shopping online for some periods and has dramatically changed consumer buying habits, increasing the risks of unauthorised and poor quality online selling for high-quality brands without appropriate measures in place.

How can you stop a third party selling your genuine goods in a manner that damages your brand? Be it poor customer service, bait and switch practices, long delivery times, substandard internet sites or poor returns policies, issues such as these, the prevalence of which has only been exacerbated by the pandemic, can create negative consumer associations with a brand. The answer – through an effective selective distribution strategy.

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Trade Mark Re-filing and Bad Faith – Go Directly to Jail. Do Not Pass GO, Do Not Collect $200 – Part Two: General Court Ruling

On 21 April 2021, the General Court of the European Union refused Hasbro’s appeal to overturn a decision that partially invalidated its EU trade mark for MONOPOLY on the ground of acting in bad faith when filing the application. The judgement by the General Court has ramifications for brand owners in both the law of bad faith but also in the practice of evergreening (repeatedly filing for an identical mark covering a broad specification of classes as the period of protection for the mark draws to an end).

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British Amateur Gymnastics Association rolls and tumbles to trade mark enforcement against UK Gymnastics – UK Court of Appeal upholds trade mark infringement finding

A recent UK Court of Appeal case has highlighted the importance of assessing the conceptual similarity of marks and not just their aural and visual similarities, when considering a potential trade mark infringement.

The UK Court of Appeal was hearing an appeal from a decision of the Intellectual Property Enterprise Court concerning a claim by the British Amateur Gymnastics Association (“BAGA”) against UK Gymnastics and UK Gymnastics Affiliation (together “UKG”) for trade mark infringement and passing off. BAGA is a not for profit private company and recognised as the national governing body for the sport of gymnastics in the UK. UKG is a gymnastics sporting body that provides: membership services to individual gymnasts, gymnastics clubs and coaches; competitions; courses and badge/certification programmes among other services.

At first instance, HHJ Melissa Clarke found UKG liable for infringement of BAGA’s trade marks and passing off. UKG were granted permission to appeal on limited grounds which are listed below.

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