On July 1, 2020, the new Federal Law on the Protection of Industrial Property (“FLPIP”) was published in the Mexican Official Gazette. The FLPIP contains important changes to laws governing intellectual property in Mexico, which were made to comply with the United States-Mexico-Canada Agreement (“USMCA”) (in Mexico officially known as T-MEC,More
Mexico: Accession to the Hague System
On June 6, 2020, Mexico acceded to the Hague System for the International Registration of Industrial Designs, governed by the Hague Agreement. Under the Hague Agreement, industrial designs protect ornamental aspects of an object. However, each country has its own legislation for the protection of industrial designs.More
Germany: Federal Court Confirms Respondents Should be Heard in Preliminary Injunction Requests
Gewerkschaft der Polizei – Bundespolizei v. Deutsche Polizeigewerkschaft (case no. 1 BvR 1246/20)
Germany is known as a jurisdiction where ex parte preliminary injunctions are relatively easy to obtain. But in a June 3,More
Supreme Court of the United States: Defense Preclusion Must “Slim-Fit” into Either Collateral Estoppel or Res Judicata
Lucky Brand Dungarees, Inc. v. Marcel Fashions Grp., Inc., __ U.S.__, 140 S. Ct. 1589 (2020)
The Supreme Court of the United States—in the context of a two-decade-long trademark dispute between clothing brand Marcel Fashions dba Get Lucky and jean maker Lucky Brand—ruled that the traditional theories of claim preclusion could be extended to bar a defendant from asserting defenses in a later suit that were not raised or fully litigated in an earlier suit. More
Supreme Court of the United States: Categorical Rule Against Registration of “Generic.com” Trademarks Rejected
By Allison Strickland Ricketts
United States Patent and Trademark Office v. Booking.com B.V., 591 U.S. ___ (2020)
In United States Patent and Trademark Office v. Booking.com B.V., 591 U.S.More
England and Wales: Use of Trademarks as Search Term Keywords
Cosmetic Warriors Ltd & Lush Limited v. Amazon.co.uk Ltd & Amazon EU SARL [2014] EWHC 181 (Ch) (10 February 2014)
In February 2014, the High Court of England and Wales issued a ruling which provides some key guidance on permissible Google AdWords usage and usage of trademarks as search terms more generally.More
Second Circuit Court of Appeals: Visual Artists Rights Act Remains Undefaced in Graffiti Art Ruling
By Joseph A. R. Gerber
The Second Circuit in February 2020 upheld a $6.75 million statutory damages award against a New York City real estate developer who whitewashed graffiti art on his property. The decision clarifies standards for analyzing cases under the rarely litigated Visual Artists Rights Act (“VARA”),More
Southern District of New York: Embedding Public Instagram Post Does Not Infringe Photographer’s Copyright
Sinclair v. Ziff Davis, LLC and Mashable, Inc., Case No. 18-cv-790-KMW, 2020 WL 1847841 (S.D.N.Y. April 13, 2020)
The United States District Court for the Southern District of New York held on motion to dismiss that embedded use of content that is publicly posted on Instagram by the copyright owner does not give rise to a copyright infringement claim by the copyright owner.More
Federal Circuit: Color Marks on Product Packaging Can Be Inherently Distinctive
In re: Forney Industries, Inc., 955 F.3d 940 (Fed. Cir. 2020)
By Michael J. Antonucci
In a recent decision, the Court of Appeals for the Federal Circuit held that color marks can be inherently distinctive when used on product packaging. More
Supreme Court: Willful Trademark Infringement Not a Prerequisite to Profit Awards
Romag Fasteners, Inc. v. Fossil Inc., 590 U.S. ___ (2020)
The U.S. Supreme Court resolved a longstanding split among the lower appellate (Circuit) courts, holding that a finding of willful trademark infringement is not required for an award of the infringer’s profits to the plaintiff.More