Tag: Trade mark

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COVID-19: USPTO Offers 30-Day Extension of Filing and Payment Deadlines to Those Affected by COVID-19 Outbreak
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COVID-19: UKIPO declares “interrupted days” to extend deadlines
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COVID-19: EUIPO extends all office deadlines; CJEU restricts operations but time limits unchanged
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We have a decision in the Sky v SkyKick case… and the long-awaited CJEU’s decision is good news for brand owners!
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New USPTO Requirement: Mandatory Electronic Trademark Submissions and Physical Addresses
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‘High’ expectations for Cannabis trade mark ‘hash’ed – Is EU trade mark law ready for Cannabis(TM)?
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Style is everything, but style names aren’t “trade marks”
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UKIPO knocks undefeated Reds off their perch – The LIVERPOOL trade mark and lessons for brand owners
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Trade mark re-filing and bad faith – Go directly to Jail. Do not pass GO, do not collect $200
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The Claridge’s Affair: A win, but at what cost?

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.

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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.

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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.

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We have a decision in the Sky v SkyKick case… and the long-awaited CJEU’s decision is good news for brand owners!

On 29 January 2020 the Court of Justice of the European Union (CJEU) handed its decision in the referral from the English High Court in the Sky v SkyKick case. We have previously covered this case and its importance for EU and UK trade mark law (including with our summary of the opinion issued by Advocate General Tanchev, which can be seen here).

The CJEU’s ruling provides good news for trade mark owners as it largely maintains the status quo for EU and UK trade mark law, departing from the AG’s Opinion in a number of important ways.

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New USPTO Requirement: Mandatory Electronic Trademark Submissions and Physical Addresses

On Tuesday July 31, 2019, the United States Patent and Trademark Office (USPTO) issued new Rules and Regulations under Title 37 of the Code of Federal Regulations (CFR) Parts 2, and 7. They were to take effect on December 21, 2019, but will now take effect of February 15, 2020.

The impact of the rule, as implemented, is a new requirement for all trademark applicants and registrants to:

  1. electronically file trademark applications, subsequent documents concerning trademark applications, and documents regarding registrations;
  2. provide and maintain a working e-mail address for receiving correspondence from the USPTO for each trademark application and registration; and
  3. provide and maintain an accurate domicile address as a backup for the USPTO to contact if an e-mail correspondence address fails to work.
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‘High’ expectations for Cannabis trade mark ‘hash’ed – Is EU trade mark law ready for Cannabis(TM)?

The EU General Court has rejected a trade mark application which featured the word ‘Cannabis’ together with images of cannabis leaves as it was contrary to public policy.

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Style is everything, but style names aren’t “trade marks”

Pinnacle Runway Pty Ltd v Triangl Limited [2019] FCA 1662

In a recent decision commenced by Pinnacle Runway against well-known swimwear brand Triangl, the Federal Court has chastised the parties involved for partaking in so called “ill-advised proceedings”. The Court also confirmed that use of a word as a style name to differentiate between product lines will not amount to use as a trade mark so as to constitute trade mark infringement.

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UKIPO knocks undefeated Reds off their perch – The LIVERPOOL trade mark and lessons for brand owners

To the interest of many a scouser and football fan alike, Liverpool Football Club’s attempt to register as a UK trademark LIVERPOOL has been rejected by the UKIPO on the grounds that the word is of “geographical significance” to the city. Liverpool FC had filed its application in regards to various goods in relation to football and the filing had attracted significant public attention.

Other English football clubs (Everton, Chelsea and Tottenham) have managed to register several trade marks for each of their respective area names. In addition Southampton Football Club has managed to register SOUTHAMPTON as an EU trade mark. As a result, it is not surprising that Liverpool FC would seek to register a similar mark to help protect its valuable brand.

However, as a result of the filing the club received significant backlash from the people of Liverpool, including their own supporters, and – probably in a related move – Liverpool FC has said that it does not plan to appeal the refusal and it has withdrawn the application. An additional trade mark application for LIVERPOOL with different claims has also been withdrawn.

The matter presents a great case study for brand owners on balancing the need to protect their brand whilst being considerate of the potential adverse PR that will come with the application for certain trade marks.

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Trade mark re-filing and bad faith – Go directly to Jail. Do not pass GO, do not collect $200

Hasbro Inc. (Hasbro), owner of the well-loved board game Monopoly, suffered a defeat on 22 July 2019, before the EUIPO Board of Appeal in relation to the MONOPOLY trade mark. The EU registration for the MONOPOLY trade mark was partially invalidated as it was found that Hasbro had acted in bad faith when filing the application as part of a ‘trade mark re-filing’ programme.

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The Claridge’s Affair: A win, but at what cost?

Claridge’s Hotel Limited (Claridge’s) recently succeeded in challenging in IPEC the use of the CLARIDGE name by Claridge Candles Limited (Claridge Candles) – a small one-person business.

However, the success came at with a cost for the world renowned hotel as in doing so it lost one trade mark registration entirely and had a second mark reduced in scope due to a non-use counterclaim, highlighting one of the risks of instituting trade mark infringement action.

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