Trademarks – Page 25 – IP Law Watch

Trademark Clearinghouse – First Annual Renewal Deadline Approaching

Oct 23 2014

The Trademark Clearinghouse (TMCH) is the central repository for validated trademarks for the purpose of protecting brands under the Internet Corporation for Assigned Names and Numbers’ (ICANN) New Generic Top-Level Domains program (new gTLD program), permitting participation in both the Sunrise and Claims processes that ICANN established to give preference to brand owners. If your company was an early registrant in the TMCH, it is likely that your registrations had an effective date of November 5, 2013, which is the date that the TMCH went ‘live’. While the TMCH procedures provide for multi-year registrations, many registrants initially paid their US$150 fee for only a single year of registration. If so, your deadline to renew is November 5, 2014.

Is the Fit-out of Sales Premises a Trademark? Ruling of the Court of Justice of the European Union

Oct 22 2014

In a recent case, the Court of Justice of the European Union (Court of Justice) ruled that a simple drawing of sales premises for goods, without any indication of dimensions or proportions, can be registered as a trademark for services involving provisions related to those goods, but which do not constitute an integral part of admitting them to trade. One of the conditions making it possible to register such a depiction as a trademark is that the depiction makes it possible for the services concerned to be differentiated from those of other businesses. A second condition is that the registration does not meet any of the grounds for refusal of a registration specified in Directive 2008/95/EC. Read More

U.S. Trademark Trial and Appeal Board Sustains First Fraud Claim Since In re Bose in 2009

Oct 21 2014

On September 30, 2014, in Nationstar Mortgage LLC v. Mujahid Ahmad, the U.S. Trademark Trial and Appeal Board (Board) sustained a claim of fraud on the U.S. Patent and Trademark Office (USPTO) for the first time since the Federal Circuit issued its 2009 decision in In re Bose, upholding an opposition to the mark NATIONSTAR for various real estate brokerage, mortgage and management services.

In response to fraud allegations, Ahmad needed to show that he was using the NATIONSTAR mark with each of the services prior to the filing date of his in-use application. Read More

Genuine Beauty Masks Mixed With Suspected Counterfeits in Hong Kong

Oct 16 2014

A seemingly endless variety of facial masks can now be found in Hong Kong, some containing ingredients like bird’s nest or the slime of a snail. Do not be surprised to see beauty products depicting a picture of a cheerful snail followed by a trail of slime on the packaging.

It has become routine for many to put on a facial mask at night in Hong Kong. Sadly, some merchants have decided to take unlawful advantage of the popularity of facial masks, albeit not necessarily containing the above ingredients or depicting a smiling snail. Read More

Have the Bubblies Popped for Champagne Jayne?

Sep 30 2014

Rachel ‘Champagne Jayne’ Powell’s passion for Champagne has helped her to become an award-winning wine expert, broadcaster, journalist and presenter. However, Ms. Powell’s ‘Champagne Jayne’ brand has put her at loggerheads with the trade organisation established to manage the common interests of the growers and the Champagne Houses behind the drink she loves so much. Read More

Limping Trade Marks and Distinctiveness in Australia

Sep 24 2014

Oyster Bay’s Wine Bottle Trade Mark Application Rejected

In 2012, New Zealand winery Oyster Bay filed a trade mark application as follows:

MIKSEŁKO VS. MILKSEŁKO ŁACIATE

Sep 23 2014

Ruling of the Supreme Administrative Court of 10 April 2014 (II GSK 255/13)

This case involved a clash between marks serving to identify fats comprising a mixture of butter and vegetable fats. In 1996, the word mark MIKSEŁKO was registered. This is a fantasy composition suggesting that the goods it identifies are a mixture of fats with the addition of butter. In 2008, a competitor of the owner of the first sign successfully registered the mark MILKSEŁKO ŁACIATE. That mark is a word-graphic mark consisting of two elements. The second is very well known as an independent mark used to identify milk and a line of goods produced from cow’s milk. The first element, by using the English word ‘milk’, emphasizes that the products are derived from milk, while the first element as a whole suggests that butter is contained in products bearing the mark. Read More

Suspected Fake Shoes Swooped in Hong Kong

Sep 18 2014

Acting on a complaint that fake sports shoes were sold in Mong Kok, a popular shopping district for trendy teens and tourists, Hong Kong Customs went into action and raided retail shops and warehouses.

Customs Officers seized suspected fakes, including 1,905 pairs of sports shoes, to a tune of HKD1.67 million. The suspected head of the fake goods syndicate along with six other people were arrested.

The arrests included a 16 year old and Customs has appealed to young people to be on guard against dodgy dealings when working in summer jobs. Read More

On Tap at the U.S. Supreme Court: An Important Trademark Case

Sep 03 2014

During its next term, which begins in October 2014, the U.S. Supreme Court will continue to decide important intellectual property cases.

In B&B Hardware, Inc. v. Hargis Industries, Inc., the Court will tackle an issue that has long vexed trademark owners and their lawyers: ‘how much deference to give determinations by the Trademark Trial and Appeal Board (TTAB) on the issue of likelihood of confusion, when a subsequent infringement action is brought in federal court?’. In other words, must a court accept the TTAB’s decision on likelihood of confusion, even though the TTAB’s jurisdiction is limited to a trademark’s registrability? Read More

A Second Helping of Kebab

Aug 11 2014

Additional Damages for Past Trade Mark Infringements

In June 2014 the Federal Court made its first award of additional damages for trade mark infringement under the ‘Raising the Bar’ amendments to the Trade Marks Act 1995 (TM Act). We reported on the original judgment in our 23 June 2014 alert, which you can find here.

Today, the Federal Court of Australia handed down another judgment in that case. This second judgement suggests that additional damages may also be available for trade mark infringements that occurred before 15 April 2013.

Category:Trademarks