In their newly published IP Litigator article, Tamar Niv Bessinger and former associate Emily Weiss (now Senior Counsel, IP at Warner Bros. Entertainment) examine policies recently implemented by the USPTO to stem the tide of fraudulent applications and prevent renewal of registrations for unused marks. Tamar and Emily also provide strategies to help brand owners navigate the rules and protect their valuable IP rights.More
TTAB: Doctrine of Foreign Equivalents Not Applicable to Personal Names
Ricardo Media Inc. v. Inventive Software LLC, 2019 USPQ2d 311355 (T.T.A.B. 2019)
In a recent precedential opinion, the Trademark Trial and Appeal Board (“TTAB”) declined to apply the Doctrine of Foreign Equivalents to recognizable personal names, holding that consumers generally would be unlikely to stop and translate such personal name marks.More
WIPO: 2020 Version of 11th Edition of Nice Classification
By Karen Lim
The 2020 version of the eleventh edition of the International Classification of Goods and Services (“Nice Classification”) will enter into force on January 1, 2020. The International Bureau of WIPO will apply the 2020 version to: (i) any application for international registration that is received by the Office of origin on or after January 1,More
Turkmenistan: New Trademark Law
A new Law on Trademarks came into force on June 19, 2019 in Turkmenistan. The most salient features of the new law are noted below:
- Definition of Trademark: The definition of “trademark” has been expanded to include “verbal, graphic or 3D” designations of any color or color combination,
Myanmar: Soft Launch of New Electronic Filing System
By Sahil Yadav
Myanmar’s new trademark law is now ripe for implementation. The Myanmar Department of Intellectual Property (MDIP)’s new electronic filing system is expected to see a “soft” launch on December 20, 2019 (although this date may be delayed) during which only trade mark owners holding declarations of ownership for trademarks under the old law may apply to register these trademarks under the new law.More
Malaysia: Accession to Madrid Protocol; New Trademark Laws
On September 27, 2019, Malaysia acceded to the Madrid Protocol as the 106th member of the Madrid System. Malaysia’s accession follows from its obligations under the ASEAN Economic Community and commitment to the ASEAN Blueprint 2025. The Madrid Protocol will enter into force in Malaysia on December 27,More
European Union: Blurred Lines Regarding Jurisdiction over Online Infringement Claims Clarified
AMS Neve Ltd v. Heritage Audio; Case No. C‑172/18
Overview
The Court of Justice of the European Union (“CJEU”) recently issued a decision on the UK Court of Appeals’ (“UKCA”) request for a preliminary ruling concerning the application of the EUTM Regulation on international jurisdiction over claims of EUTM infringement committed over the Internet.More
Costa Rica: New Procedure for Declaration of Notoriety
In August 2019, the Costa Rican Trademark Office announced a new independent procedure to request a declaration of notoriety of a trademark, outside the context of any particular opposition or invalidity case. The full name is the Procedure for Declaration of Brand Notoriety,More
Canada: Supreme Court Interprets Scope of Crown Copyright
Keatley Surveying Ltd. v. Teranet Inc., 2019 SCC 43
Background
Section 12 of Canada’s Copyright Act (“Where copyright belongs to Her Majesty”) addresses Crown copyrights owned by the government. It provides that “where any work is,More
Australia: Court Tests Limits of Style Names
Pinnacle Runway Pty Ltd v Triangl Limited [2019] FCA 1662
Rather than use long alphanumeric codes to identify each available product, fashion houses often use style names to assign an identifiable shorthand name to a particular article of clothing.More