Legal issues, law and regulations concerning the world of IP.
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.
Read MoreIn 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.
Read MoreThe 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).
Read MoreOn June 28, 2021, the Attorneys General from New York and Colorado co-authored a letter to congressional leaders supporting the restoration of the Federal Trade Commission’s right to seek equitable relief, an affirmation urgently sought by the pending Consumer Protection and Recovery Act (H.R. 2668). Twenty-eight attorneys general joined en masse to support the passage of H.R. 2668, which was introduced in April 2021 by Representative Tony Cárdenas (D-CA) to “to affirmatively confirm the authority of the Federal Trade Commission to seek permanent injunctions and other equitable relief for violations of any provision of law enforced by the Commission.”
Read MoreOn June 1, 2021, the Supreme Court granted certiorari in the ongoing case of Unicolors v. H&M Hennes & Mauritz, L.P., No. 20-915. With a nearly $1 million copyright verdict on the line, pattern manufacturer Unicolors, Inc.’s (“Unicolors”) fate is now at the Supreme Court to decide whether courts should refer copyright registration validity challenges to the Copyright Office where there is a known misrepresentation in the registration, but no evidence of intent to defraud.
A copyright registration certificate is not valid if obtained by offering false information and that information, if known, would have resulted in the registration being denied. Under 17 U.S.C. §411(b)(2), where knowingly inaccurate information is included in an application for copyright registration, “the court shall request the Register of Copyrights to advise the court whether the inaccurate information if known, would have caused the Register of Copyrights to refuse the registration.”
Read MoreOn 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:
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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A clear cut case of copyright infringement involving Twisted Sister’s hit song “We’re Not Gonna Take It” (WNGTI) has demonstrated the Court’s willingness to award significant financial penalties where intellectual property rights have been “flagrantly” infringed.
In Universal Music Publishing Pty Ltd v Palmer (No 2) [2021] FCA 434, Justice Katzmann of the Federal Court ordered Australian businessman and United Australia Party (UAP) founder Clive Palmer to pay AU$1.5 million in damages after finding that he had infringed copyright in WNGTI. Katzmann J notably awarded AU$1 million in additional damages, two-thirds of the total award, under section 115(4) of the Copyright Act 1968 (Cth) (Act).
The action was brought against Mr Palmer by joint applicants Universal Music Publishing Pty Ltd and Songs of Universal (collectively, Universal), which are the exclusive Australian licensee and copyright assignee respectively.
Read MoreIn 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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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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