Category: Trademarks

1
USPTO Proposes Rulemaking to Implement Provisions of the Trademark Modernization Act of 2020
2
Could You Be Using Your Trade Marks to Stop Unauthorised Resellers in the EU?
3
Trade Mark Re-filing and Bad Faith – Go Directly to Jail. Do Not Pass GO, Do Not Collect $200 – Part Two: General Court Ruling
4
British Amateur Gymnastics Association rolls and tumbles to trade mark enforcement against UK Gymnastics – UK Court of Appeal upholds trade mark infringement finding
5
Just One More Thing For Swatch and Apple to Fight About
6
Amendments to China’s Copyright Law
7
Australian Movement Trade Marks: Businesses “Moving” with the Times?
8
High Court of New Zealand Trade Mark Clash Over the Colour Green
9
New rules for .au domain names to launch on 12 April 2021
10
“Lettuce Turnip the Beet” Pun on T-Shirts Not Trademark Use, Ninth Circuit Affirms

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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Just One More Thing For Swatch and Apple to Fight About

Since the launch of the Apple Watch in 2015, Swatch, a well-known Swiss watch manufacturer, has been involved in a number of trade mark disputes against Apple regarding their overlapping product markets.

These disputes have concerned the marks ‘I-WATCH’ and ‘I-SWATCH’, ‘TICK DIFFERENT’ and ‘THINK DIFFERENT’ and, more recently, the mark ‘ONE MORE THING’.

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Amendments to China’s Copyright Law

The first substantial amendments to China’s Copyright Law in 20 years were passed in November 2020 and will come into effect on 1 June 2021 (the Amendments). The Amendments primarily focus on enhancing protections for copyright owners, better aligning China’s Copyright Law with international standards, and implementing the Beijing Treaty on Audiovisual Performances that entered into force in April 2020.

The heavy deterrence-related focus of the revised Copyright Law will strengthen protections for copyright owners, particularly relating to digital piracy.

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Australian Movement Trade Marks: Businesses “Moving” with the Times?

In a technological age where most consumers are receiving their information digitally, brands need to find new ways to engage with consumers. With nine out of ten Australians owning a smart phone and spending on average three hours a day on their devices, consumer engagement by way of multimedia is growing, increasing the popularity of movement trade marks.

The first movement trade mark was registered in Australia in 2002. There are currently 99 registered movement trade marks in Australia.

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High Court of New Zealand Trade Mark Clash Over the Colour Green

The High Court of New Zealand in Energy Beverages LLC v Frucor Suntory NZ Limited [2020] NZHC 3296 ruled that energy drink company Frucor Suntory NZ Ltd’s (Frucor) non-traditional green colour trade mark was valid. This decision is a rare example of a New Zealand based Court analysing non-traditional marks and highlighting the difference to Australia’s position. A full copy of the decision can be found here.

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New rules for .au domain names to launch on 12 April 2021

The .au Domain Administration (auDA) has announced new auDA Rules that will change the eligibility, allocation and terms for .au domain registration and renewal. These will come into effect on 12 April 2021 and can be accessed here.

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“Lettuce Turnip the Beet” Pun on T-Shirts Not Trademark Use, Ninth Circuit Affirms

The owner of the trademark “LETTUCE TURNIP THE BEET” cannot prevent third parties from printing the mere phrase on t-shirts, tote bags, or other products. The U.S. Court of Appeals for the Ninth Circuit affirmed on January 20, 2021 that consumers are likely to purchase such products because they find the phrase aesthetically pleasing and not because they associate the phrase with any particular source. LTTB LLC v. Redbubble, Inc., 19-16464 (9th Cir. 2021).

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