Tag: Trade mark

1
Down N’ Out – Down on their luck
2
What is the Italian historical trade mark?
3
“I wanna really really really wanna… take you to court.” VB trade mark dispute heads to the Federal Circuit Court in Australia
4
Show me the money: Supreme Court rules that trademark infringers may disgorge profits even if the law was not willfully violated
5
After the CJEU’s decision now there is a final High Court judgment in the Sky v SkyKick case
6
Kraft v Bega: Australian appeal court decision reaffirms the perils of relying on unregistered trade mark rights
7
Free Extensions of Time from IP Australia and IPONZ for COVID-19 delays
8
COVID-19: USPTO Offers 30-Day Extension of Filing and Payment Deadlines to Those Affected by COVID-19 Outbreak
9
COVID-19: UKIPO declares “interrupted days” to extend deadlines
10
COVID-19: EUIPO extends all office deadlines; CJEU restricts operations but time limits unchanged

Down N’ Out – Down on their luck

In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd [2020] FCA 193

Sydney burger chain Down N’ Out is looking to appeal Federal Court Justice Anna Katzmann’s ruling in a case brought by American fast food giant In-N-Out Burgers, Inc. (In-N-Out). In her decision handed down earlier this year, Justice Katzmann found that Down N’ Out infringed In-N-Out’s registered trade marks and engaged in misleading and deceptive conduct and passing off. At a hearing last week, her Honour made declarations regarding Down N’ Out’s infringing conduct and granted Down N’ Out leave to appeal the orders. The determination of compensation will take place after any appeal.

Read More

What is the Italian historical trade mark?

We increasingly hear about “brand value” along with figures and suggested strategies to assist brands in difficult times.

In Italy new provisions have been approved to recognise the value of the so called historical trade marks (ie. marchio storico). To be clear, these provisions are not related to COVID-19 economic measures aiming to boost the Italian economy. They have been in the agenda for quite some time with the aim of promoting the Made in Italy and increase the value of Italian brands abroad. However, they can be considered as additional measures available to companies in such challenging times.

Read More

“I wanna really really really wanna… take you to court.” VB trade mark dispute heads to the Federal Circuit Court in Australia

Fashion mogul and former Spice Girl, Victoria Beckham has lost the first round of a trade mark battle with Australian skincare brand, VB Skinlab, in relation to two of VB Skinlab’s pending Australian trade mark applications for the “VB” brand filed in March 2018. A full copy of the decision can be found here.

Read More

Show me the money: Supreme Court rules that trademark infringers may disgorge profits even if the law was not willfully violated

The U.S. Supreme Court confirmed that brand owners are not required to prove willful intent before obtaining a defendant’s lost profits. On April 23, 2020, the Supreme Court resolved a longstanding circuit split and unanimously held that trademark infringers may have to hand over their profits even if they did not willfully infringe.

In Romag Fasteners, Inc. v. Fossil Group, Inc., the Supreme Court was tasked with determining whether the rule that a plaintiff can win a profit remedy only after showing a defendant willfully infringed its trademark can be reconciled with the statute’s plain language. Ultimately, the Supreme Court sided with the plaintiffs, Romag Fasteners (Romag), holding that:

“[a] plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award.”

Read More

After the CJEU’s decision now there is a final High Court judgment in the Sky v SkyKick case

After the CJEU’s ruling earlier this year (as discussed here), the Sky v Skykick case has now returned to the English High Court and Lord Justice Arnold on 29 April 2020 issued a final judgment in the case (see full text of the judgment here).

Although Sky’s trade marks were found to be partially invalid on the ground that they were applied for in bad faith, Sky was still ultimately successful in establishing infringement.

Read More

Kraft v Bega: Australian appeal court decision reaffirms the perils of relying on unregistered trade mark rights

In the case Kraft Foods Group Brands LLC v Bega Cheese Limited [2020] FCAFC 65, the Full Court of the Federal Court of Australia has dismissed Kraft’s appeal of a decision entitling Bega to exclusive use of the iconic yellow lid and yellow label with a blue or red peanut device on its peanut butter jars.

Read More

Free Extensions of Time from IP Australia and IPONZ for COVID-19 delays

The COVID-19 outbreak has impacted all businesses in one way or another and IP Australia understands that dealing with IP matters is not necessarily the highest priority for some businesses.

As a result, from 22 April 2020 IP Australia is providing free three month extensions of time for most deadlines but not renewal and continuation fees deadlines. Additionally, the six month grace period is still available and ordinary extensions of time will remain available for periods of longer than three months.

Read More

COVID-19: USPTO Offers 30-Day Extension of Filing and Payment Deadlines to Those Affected by COVID-19 Outbreak

In a Notice issued March 31, 2020, the U.S. Patent and Trademark Office (“USPTO”) extended certain filing and payment deadlines due between March 27, 2020, and April 30, 2020, by 30 days from the initial due date, provided that the filing is accompanied by a statement that the delay was due to the COVID-19 outbreak. The USPTO’s authority to offer this extension was part of the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), signed into law on March 26, 2020.

Read More

COVID-19: UKIPO declares “interrupted days” to extend deadlines

Following similar measures from the EUIPO and other national registries (see here), the UK Intellectual Property Office (the UKIPO), has declared 24 March 2020, and subsequent days until further notice, “interrupted days”. This means that any deadlines for patents, supplementary protection certificates, trade marks, designs, and applications for these rights, which fall on an interrupted day will be extended until the UKIPO notifies the end of the interrupted days period.

Read More

COVID-19: EUIPO extends all office deadlines; CJEU restricts operations but time limits unchanged

With the global impact of the COVID-19 pandemic being seen in all facets of our lives, European IP registries are also seeking to manage these exceptional circumstances.

On Monday 16 March 2020, the Executive Director of the EUIPO issued a decision extending all time limits for EU trade marks and designs expiring between 9 March 2020 and 30 April 2020, that affect all parties before the Office, to 1 May 2020. Similarly, the EPO has announced that all deadlines for patent matters are extended until 17 April 2020.

Read More

Copyright © 2019, K&L Gates LLP. All Rights Reserved.