Trademarks – Page 12 – IP Law Watch

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

Mar 31 2020

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.

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

Mar 17 2020

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.

New workshare arrangement aims to reduce time to obtain Mexican counterpart patent protection

Jan 30 2020

The USPTO and the Mexican Institute of Industrial Property (IMPI) have announced a new worksharing arrangement that aims to make it easier and faster to obtain a Mexican patent for those who have already obtained a corresponding U.S. patent. The agreement allows IMPI to leverage USPTO search and examination results in an effort to significantly reduce the review time of a Mexican patent application.

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

Jan 29 2020

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.

Trademark infringement case update: Lucky Brands Dungarees v Marcel Fashion Group

Jan 13 2020

A nearly 20-year dispute between two competitors in the apparel industry will be heard by the Supreme Court Monday January 13, 2020, on the legal issue of claim preclusion – highlighting the practical pitfalls of releasing trademark infringement claims in settlement agreement between parties that continue to use the marks at issue. The case is Lucky Brands Dungarees, Inc. v. Marcel Fashion Group, Inc., Case No. 18-1086.

The practical lessons to draw from this dispute are numerous:

the importance of initially clearing marks and implementing a plan to handle potential third party objections
strategic enforcement as to when, and against whom, to enforce trademark rights – and squarely on point with this nearly 20 year battle now before the Supreme Court
careful drafting of what claims are released in the context of future use of the same or similar trademarks.

New USPTO Requirement: Mandatory Electronic Trademark Submissions and Physical Addresses

Dec 20 2019

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:

electronically file trademark applications, subsequent documents concerning trademark applications, and documents regarding registrations;
provide and maintain a working e-mail address for receiving correspondence from the USPTO for each trademark application and registration; and
provide and maintain an accurate domicile address as a backup for the USPTO to contact if an e-mail correspondence address fails to work.

‘High’ expectations for Cannabis trade mark ‘hash’ed – Is EU trade mark law ready for Cannabis(TM)?

Dec 19 2019

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.

Ferrero successfully enforces the Tic Tac shape mark in Italy

Nov 26 2019

Many of us had a Tic Tac box in our pockets as kids, no matter the country we grew up in. Ferrero Spa (“Ferrero”), the Italian manufacturer of Tic Tac (and lots of other delicious confectionary products) registered the Tic Tac box as a trade mark in several jurisdictions, including Italy.

After succeeding before the CJEU in the invalidation action against BMB sp. z o.o. earlier this year (click here), in a recent case brought before the Italian courts, Ferrero successfully defended its shape marks, despite the invalidity claim brought by S.r.o. Mocca spol. (“Mocca”), a Czech company selling Bliki-branded mints in an identical container.

Lucky number 7: IPEC small tracks claims can be issued in 7 new locations and are no longer tied to London

Nov 18 2019

The expansion of the UK Intellectual Property Enterprise Court (the “IPEC”) has continued with claims now able to be issued in seven new locations outside of London.

To 3D, or not to 3D, that is the question: Another twist in the Rubik’s Cube and its EU trade mark protection

Nov 13 2019

The long running and highly publicised Rubik’s cube case has taken another twist. On 24 October 2019, the EU General Court confirmed the cancellation of the EU trade mark for the 3D shape. The mark was cancelled because its essential characteristics were deemed necessary for its technical function (i.e. the shape’s ability to rotate).

Category:Trademarks