Tag: Trademark

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If You Want It, You Should Have Done a Search On It: Why Trademark Searches are Essential Before Settling Down With a New Brand
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The ‘Standard’ of Use Evidence in the EU – Advertising and Promotion Can be Enough to Show Genuine Use of a Service Without That Service Actually Crossing the Pond
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The Battle of the Supermarkets – Evergreening of Trade Marks and Potential Bad Faith
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Mind the Gap: Patagonia Sues Gap For Copying Fleece Design
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Singapore Maintains Hard-Line Take on Goodwill in Million-Dollar Wonton Noodle Feud
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Dior Did Not SADDLE on Distinctive Character of Its Iconic Bag
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Henkel Cleans Out FINISH Trade Marks
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Australian Government Commits to Protecting First Nations Visual Art
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Who Really Owns Your Business’s Trade Mark? Federal Court of Australia Confirms That a Trade Mark Can Be Registered in The Name of a Company’s Sole Director and Shareholder
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Keep an Eye on Your Mailbox – Appoint a UK Representative for Trade Marks Filed Through WIPO

If You Want It, You Should Have Done a Search On It: Why Trademark Searches are Essential Before Settling Down With a New Brand

Have you chosen a brand only to learn months later that the U.S. Patent and Trademark Office is refusing to register it due to someone else’s prior trademark registration or pending application? The USPTO’s most recent Q4 2022 data indicates that it takes 8 months or more for a trademark application to be reviewed—and ideally approved—by an examiner. Given that prolonged timeline, any issues with the application, such as a similar third-party mark that could prevent your own registration, may not surface until you or your company has already invested heavily in the mark.

This raises the question: what can be done for brands eager to launch but that want some measure of comfort that their trademark will be valid?

The answer: Searching.

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The ‘Standard’ of Use Evidence in the EU – Advertising and Promotion Can be Enough to Show Genuine Use of a Service Without That Service Actually Crossing the Pond

Does evidence showing booking, advertising and selling services in the EU constitute genuine use if the service actually registered takes place abroad?

This was the question contemplated by a recent decision of the General Court. The case T-768/20 (Standard International Management LLC v EUIPO) addresses the use of trade marks in the EU where the relevant brand operates hotel and leisure facilities outside the jurisdiction.

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The Battle of the Supermarkets – Evergreening of Trade Marks and Potential Bad Faith

Two well-known grocery stores, Tesco and Lidl, are involved in an ongoing trade mark dispute (Lidl Great Britain Limited v Tesco Stores Limited [2022] EWHC 1434 (Ch)). While the trial is set to take place in 2023, the recent developments in relation to arguments of bad faith are noteworthy, especially for brands engaged in trade mark refiling, or ‘evergreening’.

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Mind the Gap: Patagonia Sues Gap For Copying Fleece Design

High-end outdoor clothing brand Patagonia Inc is taking on fast fashion retailer Gap for copying its “iconic” fleece jacket design. Patagonia Inc has filed court proceedings in the Federal Court.

In a complaint filed on 22 November 2022, Patagonia alleges that Gap willfully and deliberately copied the fleece design through the creation and sale of its “Mockneck Pullover” jackets, mimicking the flap pocket and rectangular logo of Patagonia’s classic “Snap-T” fleece jackets (shown below).

Patagonia “Snap-T” Pullover Fleece
Gap Product
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Singapore Maintains Hard-Line Take on Goodwill in Million-Dollar Wonton Noodle Feud

In Singapore, popular eatery “ENG’S Wonton Noodles” is known for its springy noodles, luscious wonton dumplings and fiery chilli sauce. Its popularity attracted more than S$1.6 million in revenue one year, but a fallout between the founder’s children and their business partners led to multiple disputes, including a dispute over trade mark rights to the “ENG’S” name in Pauline New Ping Ping v Eng’s Char Siew Wantan Mee Pte. Ltd. [2022] SGIPOS 10.

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Dior Did Not SADDLE on Distinctive Character of Its Iconic Bag

Another unfavourable decision on non-traditional trade marks has landed, now in relation to Dior’s iconic Saddle bag. The EUIPO’s Second Board of Appeal decided that Dior’s Saddle bag is not distinctive with respect to handbags. The decision is seen as surprising yet not unpredictable, given the recent history of unsuccessful trade mark applications for 3D signs (for example, see our previous article on the Moon Boot case here).

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Henkel Cleans Out FINISH Trade Marks

It’s all out in the wash: Henkel Australia Pty Ltd (Henkel) has successfully removed two dishwashing tablet trade marks owned by Reckitt Benckiser Finish BV (Reckitt) from the register.

In the recent Federal Court decision RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2022] FCA 1042, Rofe J simultaneously overturned an interlocutory injunction against Henkel and declared that two trade marks for dishwashing tablets owned by Reckitt should be removed from the register for non-use.

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Australian Government Commits to Protecting First Nations Visual Art

“80% of the souvenirs sold in Australia purporting to represent First Nations cultures are in fact imitation products. These inauthentic items have no connection to First Nations peoples and are often cheaply made imports.”

This extraordinary statistic was presented by Ann Sudmalis MP, Chair of the Standing Committee on Indigenous Affairs which tabled the 2018 Report on the impact of inauthentic art and craft in the style of First Nations peoples (Report).

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Who Really Owns Your Business’s Trade Mark? Federal Court of Australia Confirms That a Trade Mark Can Be Registered in The Name of a Company’s Sole Director and Shareholder

Ensuring trade marks are registered in the correct name is of critical importance, especially when registration of the trade mark is challenged.

This was amply demonstrated in the recent Federal Court of Australia decision of Watson as Trustee for the Watson Family Trust v Cosmetic Warriors Ltd [2022] FCA 700.

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Keep an Eye on Your Mailbox – Appoint a UK Representative for Trade Marks Filed Through WIPO

A direct United Kingdom (UK) trade mark application to the UK Intellectual Property Office (UKIPO) contains a requirement to name a UK address for service. In contrast, it has been a standing practice of the UKIPO to process International Trade Mark Registrations via the Madrid Protocol designating the UK without requiring a UK service address. The UKIPO would only require to specify a UK service address in circumstances where objections or oppositions are raised in relation to the International Trade Mark Registrations during prosecution. However, the recent decision in MARCO POLO (O/681/22) has called this UKIPO’s practice into question.

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