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
WIPO: Guidance on Prosecuting International Registrations During COVID-19 Pandemic
By Tommas Balducci
Trademark owners who use the Madrid System for the international registration of trademarks (or their representatives, collectively “Holders”) face a range of challenges in meeting deadlines and communicating with the World Intellectual Property Organization (“WIPO”) during the COVID-19 pandemic. WIPO has issued the following guidelines to address issues likely to arise from the lockdowns in many countries. More
Venezuela: New Opposition/Cancellation Provisions and Covid-19 Update
By Sahil Yadav
The Venezuelan Intellectual Property Office (SAPI) published a series of official decisions via an official communication on February 7, 2020, that introduced new procedures for trademark oppositions and non-use cancellation actions in Venezuela. A summary of these provisions follows:More
Nicaragua: Amendments to Trademark Law
Amendments to the Nicaraguan Trademark Law came into force on April 3, 2020 to expedite trademark proceedings. The amendments were effected by Law No. 1024, published in the Nicaragua Official Gazette on April 3,More
Germany: Regional Court Finds Clothing Model Name Non-Infringing
Higher Regional Court Frankfurt a. M., Urt. of. 1.10.2019 – 6 U 111/16
In an October 1, 2019, decision, the Higher Regional Court Frankfurt am Main held that the use of a model name for trousers does not constitute an infringing use of another party’s registered trademark for clothing. More
France: Administrative Invalidation and Revocation Actions Now Available
Canada: Protective Orders in Trademark Cases
Canadian National Railway Company v. BNSF Railway Company, 2020 FCA 45
Historically, the Federal Court of Canada (where most IP litigation is heard) has been issuing so-called protective orders covering confidential information,More
Australia: Assignment of Unregistered Marks
Kraft Foods Group Brands LLC v Bega Cheese Limited [2020] FCAFC 65 (14 April 2020)
The Federal Court of Australia (FCA) overturned the lower court’s decision and held that an unregistered mark could not be assigned separately from the goodwill of the business in which it is used.More
WIPO: Guidance on Prosecuting International Registrations During COVID-19 Pandemic
By Tom Balducci
Trademark owners who use the Madrid System for the international registration of trademarks (or their representatives, collectively “Holders”) face a range of challenges in meeting deadlines and communicating with the World Intellectual Property Organization (“WIPO”) during the COVID-19 pandemic. WIPO has issued the following guidelines to address issues likely to arise from the lockdowns in many countries.More