Tag: Trade mark

1
New parallel importation laws in Australia
2
Chocolate Slab-Gate
3
Change is Coming to Australian Parallel Importation law – What do you Need to Know?
4
The European trade mark reform – Phase 2
5
Changes to divisional trade mark applications flagged by IP Australia
6
Criminal trade mark offences to also apply to grey market goods in UK
7
How distinctive can a chocolate bar be? After Kit Kat, now it’s Toblerone’s turn
8
Duty of examining a mark in the registration stage – judgement of the EU Court in the case of Indeutsch International, Case T-20/16
9
Louis Vuitton Seeks Supreme Court Review to Resolve Purported Circuit Split on Trademark Dilution
10
Say My Name: Beyoncé files trademarks for her newborn twins’ names

New parallel importation laws in Australia

Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 receives Royal Assent on 24 August 2018

The proposed changes to parallel importation law that we blogged about in January 2018 and May 2018 have become law.

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Chocolate Slab-Gate

Waitrose has agreed to stop producing “copycat” chocolate slabs following an ongoing dispute with Hotel Chocolat.

Hotel Chocolat accused Waitrose of infringing its intellectual property rights in its distinctive curved shaped chocolate slab.  This was further reinforced when individuals were taking to Twitter to question whether Hotel Chocolat were actually producing the chocolate slabs for Waitrose.  Hotel Chocolat requested that Waitrose removed the offending chocolate slabs from sale.

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Change is Coming to Australian Parallel Importation law – What do you Need to Know?

Trade mark holders may need to reassess their commercial and international marketing strategies as the proposed amendments to the parallel importation provisions of the Trade Marks Act 1995 (Cth) (Act) take a step closer to enactment by the Australian Parliament.

The proposed amendments to the Act, contained in the draft Intellectual Property Laws Amendment (Productivity Commission response Part 1 and other measures) Bill (Draft Bill) will favour parallel importers in Australia.

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The European trade mark reform – Phase 2

On 1 October 2017, the second part of the European trade mark reform entered into force, completing the implementation of Regulation (EU) 2015/2424 amending the Community trade mark regulation (EUTMR).

Taking a step back, this is in fact the last part of a much longer reform process that began about 10 years after the adoption of the EU trade mark system in 1996. In 2008, the European Commission published the Communication on an industrial property rights strategy for Europe with the intent to review the current practice and bring the European trade mark system to the next level. Subsequently, in depth studies, a public consultation and an impact assessment followed until the approval, in December 2015, of a new amending Regulation and a Directive to harmonise the laws of Member States.

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Changes to divisional trade mark applications flagged by IP Australia

IP Australia has released a consultation paper (Paper) concerning proposed amendments to Australia’s system for filing divisional trade mark applications.  The Paper proposes amendments which will affect all divisional applications filed in Australia, including allowing divisional applications to be filed for International Registrations Designating Australia (IRDAs) for the first time.

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Criminal trade mark offences to also apply to grey market goods in UK

In a positive decision for brand owners, the UK Supreme Court has confirmed that criminal trade mark offences can apply to the sale and distribution of grey market goods in addition to counterfeit goods.

In R v M & Ors [2017] UKSC 58, the appellants had been importing clothes and shoes into the EU that bore trade marks of famous fashion brands. These were a combination of counterfeit goods and grey market goods (i.e. goods that had been produced with the trade mark owner’s consent but that had been subsequently sold without their consent).

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How distinctive can a chocolate bar be? After Kit Kat, now it’s Toblerone’s turn

In newly issued court proceedings, the makers of Toblerone have become the latest confectionary manufacturers to seek to protect the shape of their product via 3D trade mark registrations. Following the recent difficulties Nestlé faced in registering the shape of their Kit-Kat bar, Mondelez have commenced proceedings against Poundland in relation to their newly announced Twin Peaks bar. Twin Peaks bears more than a passing resemblance to a Toblerone, except that each chunk of chocolate features two peaks rather than one.

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Duty of examining a mark in the registration stage – judgement of the EU Court in the case of Indeutsch International, Case T-20/16

On 15 February 2010, the company M/S. Indeutsch International (Applicant) filed figurative EU trademark:

for “knitting needles” and “crochet hooks” belonging to the 26th class of the Nice Classification. EUIPO registered the aforementioned mark, however an application for declaration of invalidity of the trademark in question was filed on the basis of the lack of distinctive character of the registered sign.

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Louis Vuitton Seeks Supreme Court Review to Resolve Purported Circuit Split on Trademark Dilution

Louis Vuitton recently petitioned the U.S. Supreme Court to review a Second Circuit ruling that certain handbags are fair-use parodies of Louis Vuitton products, and therefore do not give rise to liability for trademark dilution by blurring. In its petition, Louis Vuitton contends there is a split of authority between the Second and Fourth Circuits regarding parody as a fair-use defense to dilution.

Louis Vuitton is the owner of famous trademarks “that immediately bring… to mind Louis Vuitton as the sole source of handbags and other stylish, high-quality goods bearing its marks.” My Other Bag, Inc. offers handbags with images of Louis Vuitton’s famous marks reproduced on one side, and the phrase “My other bag” inscribed on the back.

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Say My Name: Beyoncé files trademarks for her newborn twins’ names

Long gone are the days where the first registration of your child’s name was on their birth certificate.  On 26 June 2017, U.S. Trade Mark Application Numbers 87506186 and 87506188 were filed for the names of Beyoncé Knowles-Carter and Shawn ‘Jay-Z’ Carter’s newborn twins ‘Rumi Carter’ and ‘Sir Carter’ by Beyoncé’s holding company, BGK Trademark Holdings.

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