IP Law Watch

Legal issues, law and regulations concerning the world of IP.

 

1
Trademark Clearinghouse – First Annual Renewal Deadline Approaching
2
Is the Fit-out of Sales Premises a Trademark? Ruling of the Court of Justice of the European Union
3
U.S. Trademark Trial and Appeal Board Sustains First Fraud Claim Since In re Bose in 2009
4
Restrictions to Filing Divisional Applications Under New Zealand’s New Patent Law
5
Genuine Beauty Masks Mixed With Suspected Counterfeits in Hong Kong
6
‘Like-Gating’? Facebook Says Dislike
7
Introducing Our ‘Fashion Law’ Newsletter
8
Further Amendments to Australian Patent Law Coming Soon
9
More Transparency on the Use of App Users’ Personal Data!
10
The Debate Continues: What is a ‘Transformative Use’ for ‘Fair Use’ Purposes

Trademark Clearinghouse – First Annual Renewal Deadline Approaching

The Trademark Clearinghouse (TMCH) is the central repository for validated trademarks for the purpose of protecting brands under the Internet Corporation for Assigned Names and Numbers’ (ICANN) New Generic Top-Level Domains program (new gTLD program), permitting participation in both the Sunrise and Claims processes that ICANN established to give preference to brand owners. If your company was an early registrant in the TMCH, it is likely that your registrations had an effective date of November 5, 2013, which is the date that the TMCH went ‘live’.  While the TMCH procedures provide for multi-year registrations, many registrants initially paid their US$150 fee for only a single year of registration.  If so, your deadline to renew is November 5, 2014.

Is the Fit-out of Sales Premises a Trademark? Ruling of the Court of Justice of the European Union

In a recent case, the Court of Justice of the European Union (Court of Justice) ruled that a simple drawing of sales premises for goods, without any indication of dimensions or proportions, can be registered as a trademark for services involving provisions related to those goods, but which do not constitute an integral part of admitting them to trade. One of the conditions making it possible to register such a depiction as a trademark is that the depiction makes it possible for the services concerned to be differentiated from those of other businesses. A second condition is that the registration does not meet any of the grounds for refusal of a registration specified in Directive 2008/95/EC. Read More

U.S. Trademark Trial and Appeal Board Sustains First Fraud Claim Since In re Bose in 2009

On September 30, 2014, in Nationstar Mortgage LLC v. Mujahid Ahmad, the U.S. Trademark Trial and Appeal Board (Board) sustained a claim of fraud on the U.S. Patent and Trademark Office (USPTO) for the first time since the Federal Circuit issued its 2009 decision in In re Bose, upholding an opposition to the mark NATIONSTAR for various real estate brokerage, mortgage and management services. 

In response to fraud allegations, Ahmad needed to show that he was using the NATIONSTAR mark with each of the services prior to the filing date of his in-use application. Read More

Restrictions to Filing Divisional Applications Under New Zealand’s New Patent Law

The New Zealand Patents Regulations 2014 have effectively introduced a five year deadline for filing divisional applications.

The deadline arises as a result of restricting the period in which examination of a divisional application may be requested. In this regard, examination must be requested within five years of the date of filing of the parent application, or for a series of divisional applications, within five years of the date of filing of the first application in the series. Read More

Genuine Beauty Masks Mixed With Suspected Counterfeits in Hong Kong

A seemingly endless variety of facial masks can now be found in Hong Kong, some containing ingredients like bird’s nest or the slime of a snail. Do not be surprised to see beauty products depicting a picture of a cheerful snail followed by a trail of slime on the packaging.

It has become routine for many to put on a facial mask at night in Hong Kong. Sadly, some merchants have decided to take unlawful advantage of the popularity of facial masks, albeit not necessarily containing the above ingredients or depicting a smiling snail. Read More

‘Like-Gating’? Facebook Says Dislike

Facebook Changes to its ‘Platform Policy’ can Affect Your Page

Facebook has announced a change to its Policy Platform that may affect the majority of users.

The policy change advises that Facebook will no longer allow advertisers to incentivise people to use social plugins or to like a Facebook Page (Page). This includes offering rewards, or gating apps or app content based on whether or not a person has liked a Page. It is still acceptable to incentivise people to login to your app, check-in at a place, or enter a promotion on your app’s Page.  Read More

Introducing Our ‘Fashion Law’ Newsletter

“You can never be overdressed or overeducated.” Oscar Wilde

We are excited to announce the launch of Fashion Law, our bi-annual fashion newsletter. This newsletter, which comprises short articles, will discuss legal issues that impact the Australian fashion industry.

From top tips for Australian designers and fashion businesses to changes in laws overseas, Fashion Law will provide you with information on issues that directly affect your business.

Please click here to read the first edition of Fashion Law.

Further Amendments to Australian Patent Law Coming Soon

Earlier this year, the Intellectual Property Laws Amendment Bill 2014 (2014 Bill) was introduced into Parliament by the Coalition Government. The Bill represents a revised version of the Intellectual Property Laws Amendment Bill 2013 (2013 Bill) introduced by the previous Labor Government. The 2013 Bill lapsed when the Federal Election was called in August 2013.

 The most significant aspects of the 2014 Bill are as follows: 

  • Introduction of a single patent attorney regulatory regime and a single patent application and examination process for Australia and New Zealand.
  • Enabling Australian pharmaceutical manufacturers to apply to the Federal Court for a compulsory licence to manufacture generic versions of patented drugs to supply to developing countries. Read More

More Transparency on the Use of App Users’ Personal Data!

Italian Data Protection Authority Focuses on Medical and Wellness Apps Sector

On September 10, 2014, Italian Data Protection Authority (Authority) released the findings of a survey conducted on the medical/wellness apps sector within the initiative ‘Privacy Sweep 2014’, promoted by the Global Privacy Enforcement Network, which enhances the cooperation amongst international data protection authorities.

As a result of such survey, just 15% of the medical apps surveyed – out of a total of 1,200 – provide clear privacy policies and the Authority is now considering issuing specific measures or sanctions for non-compliant subjects. Read More

The Debate Continues: What is a ‘Transformative Use’ for ‘Fair Use’ Purposes

In a recent decision by the U.S. Circuit Court of Appeals for the Seventh Circuit (Seventh Circuit), Judge Frank Easterbrook expressly joined the ongoing debate over the scope of ‘transformative use’ analysis in the ‘fair use’ defense to copyright infringement. In Kienitz v. Sconnie Nation LLC, the court reviewed the trial court’s determination that the using of a photograph of the mayor of Madison, Wisconsin, on a critical T-shirt was ‘fair use’ and did not create liability under the Copyright Act. In finding ‘fair use’, the trial court found support in the recent opinion in Cariou v. Prince, in which the U.S. Circuit Court of Appeals for the Second Circuit held that the use of a photographic image in a work of ‘appropriation art’ was ‘transformative’ and thus a ‘fair use’.

Read More

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