The Trademark Lawyer

If you have not heard of OpenAI’s machine learning models DALL·E and DALL·E 2, the link is here: https://openai.com/dall-e-2/. It’s absolutely amazing, we would suggest you have a go before reading this article. The prompt “Hamster playing the violin out at sea by...

The myriad of intellectual property issues arising from the creation and use of deepfakes recently came to prominence when Apple announced that it had obtained a US patent for a method for the creation of deepfakes. It showed that deepfake technology has come of age...

Background Two of the biggest players in the energy drinks game come head to head in this trademark dispute. As Monster Energy appealed a decision refusing Monster’s application to register the mark ‘Red Dawg’. At the original hearing Red Bull had opposed registration...

Lara Prescott has won the copyright case brought against her by Anna Pasternak in respect of Ms Pasternak’s book, Lara, with the Judge finding that copyright in Ms Pasternak’s book has not been infringed by Lara Prescott’s book, The Secrets We Kept (“TSWK”). Ms...

The case :  Juanita’s Foods v. Dominguez Family Enterprises, Inc., CACD Case # 2:22-cv-06049-PA-PLA Miller Barondess, LLP represents plaintiff Juanita’s Foods, one of the largest Mexican food producers and distributors in the U.S.  The company’s products are sold...

Imitation is the highest form of flattery”, however, what about in the circumstances where the subject of a parody are trademark owners? Most often, trademark owners find it difficult to accept that it is a compliment. E.g., the case between Gucci v Cuggl 2022; Gucci...

Iceland the country and Iceland Foods Ltd (the supermarket specializing in frozen foods) have been engaged in a long running and well publicized dispute over their name. A new milestone was reached on 9 September when the Grand Board of the European Intellectual...

As World Mental Health Day falls on the 10th day of the 10th month here are 10 reasons why you might consider reaching out to legal mental health charity LawCare for support. Everyone you'll speak to on the phone, email or online chat either works in, or has worked in...

Recently, Usain Bolt filed a US trademark application for his signature 'Lightning Bolt' pose, seeking protection for a large range of goods and services from the typical merchandising goods. This includes clothing, bags, jewellery and sunglasses, right through to the...

Learn more about how to improve the culture in the law and how to make your legal organisation a happy and healthy place to work Legal mental health charity LawCare has announced the full line up of speakers for its online conference ‘Building a Better Life in the...

Whilst some countries in the Caribbean have an efficient trademark renewal process, for the most part renewals cannot be filed electronically and can be more time-consuming than brand owners and foreign trademark practitioners may expect based on their own local...

The decision-making practice and approaches of EU institutions regarding the provision of legal protection to three-dimensional trademarks (3D trademarks) are not consistent and unambiguous when assessing the presence of a distinctive character of the product shape,...

With climate change in the hearts and minds of people all over the world, now more than ever, consumers are conscious of making environmentally friendly decisions. The increased availability of eco-friendly and sustainable goods and services (or so-called ‘green’...

 It has been a good few months for unfair advantage claims, presenting opportunities for brand owners to decisively tackle lookalikes. Hoisting Lidl by their own petard Serial copycats Lidl are suing Tesco in the High Court for trademark infringement in respect of...

Retail giant, Zara, tried to get Darlington-based fashion boutique, House of Zana, which specializes in handmade kimonos, to change its name. Mrs Kotrri, whose husband is Albanian, set up her company in 2019 and named it after the Albanian word for "fairies", namely...

Quidditch first appeared as a fictious sport in the JK Rowling novel Harry Potter and the Philosopher’s Stone, where it is played by wizards and witches riding magical flying broomsticks. It famously continued to feature in later Harry Potter books, as well as the...

Trademark use in non-fungible tokens (NFTs) and for virtual goods in the metaverse is increasing rapidly. Examples of growing trademark use in NFTs and the metaverse include the cases of Nike v StockX and the Hermès v MetaBirkins. By not extending their existing...

Protection of IP in Russia is often being discussed in the media nowadays and judging by the publications that one may see Russia tends to dismiss any rights vested in IP which is outright wrong. In the meantime, IP life goes on as usual and infringement is active as...

Just over six years ago, the United Kingdom voted to exit the European Union.  With most of the provisions affecting the protection and enforcement of Intellectual Property settled, now is a good time to reflect on the impact on brand owners and the future...

In a digitally connected world, a byte of data can boost or bite your brand -Bernard Kelvin Clive Introduction: Objectives and Rights under the Trademark Regime “What’s in a name?” the famous Shakespeare quote is, perhaps, the most widely cited piece of literature...

“What's in a name? That which we call a rose, by any other name, would smell as sweet.” While William Shakespeare may have been of the opinion that the naming of things is irrelevant, trademark lawyers take a very different view. In fact, recently filed trademark...

EnCirca's AltRoots Trademark Search Engine Helps Brands Monitor and Secure Decentralized Web and Metaverse Domains July 14, 2022- BOSTON, MA  - EnCirca, a 20-year ICANN-accredited domain name registrar, today introduced AltRoots (www.AltRoots.com), the industry’s...

The end of June marked the return of one of the most important events in the sporting calendar and one of the most iconic tennis tournaments in the world: Wimbledon. The All England Lawn Tennis Club (the “Club”) has owned multiple registered trademarks for the...

Back in 2011, The Ohio State University failed to trademark the word [1]" the," with the U.S. Patent and Trademark Office. Court held, “In order for a trademark to be registered for a brand of clothing, the trademark must be used in a trademark fashion. In other...

The International Trademark Association (INTA) has filed an amicus brief in the United States Court of Appeals for the Second Circuit in Vans, Inc., VF Outdoors LLC v. MSCHF Product Studio, Inc., 22-606-cv (2d Cir.). In its brief, INTA proposes that the deferential...

From TikTok to Comirnaty - Software, media, fintech and finance; luxury, fashion, sports; and pharmaceutical brands comprise nearly half the list with 15 brands each, Clarivate Top 100 New Brands Report reveals Clarivate Plc (NYSE: CLVT), a global leader in providing...

With just over a month to the 2022 Commonwealth Games in Birmingham, advertising agencies, along with local and global businesses, will be thinking of innovative ways to increase their global exposure through associating with the Commonwealth Games. Whilst the hosting...

Using UK copyrighted datasets to train AI will not amount to copyright infringement The UK Government's announcement on its approach to data mining and intellectual property is likely to provide a boost to innovation in AI, says leading intellectual property law firm...

IP firm launches comprehensive set of measures to encourage discussion and support colleagues experiencing the menopause with firmwide menopause policy European IP firm Mewburn Ellis has launched a firmwide menopause policy to encourage discussion around, and support...

The International Trademark Association (INTA) will be holding its Trademark Administrators and Practitioners (TMAP) Meeting in Arlington, Virginia from September 11 to 13, providing hundreds of trademark administrators, paralegals, young practitioners, and...

The Anti-Counterfeiting Group (ACG) has announced the winners of the 2022 ACG Awards for Excellence in Anti-Counterfeiting Enforcement at an event hosted by Phil Lewis, Director General at the ACG at the Chartered Trading Standards Institute (CTSI) Conference in...

More than half (52 %) of Europeans surveyed aged between15 and 24 said they had bought at least one fake product online over the past year, both intentionally or by accident, and a third (33 %) said they had accessed digital content from illegal sources. Looking at...

The International Trademark Association (INTA) has filed an amicus brief before the Grand Board of Appeal (GBoA) of the European Intellectual Property Office (EUIPO) in Matthias Zirnsack vs. EUIPO, Case R-260/2021-G, concerning the registrability of the figurative...

April 2022. The events in the Ukraine are widely discussed everywhere. In the meantime, life of intellectual property and its enforcement continues. On April 27, 2022, commercial court in the Russian Far East handed down a judgment against the infringer. It bore a...

A beef arose in April 2022 when Vegadelphia, a plant-based food company out of Philadelphia, recently sued Dunkin’ and Beyond Meat claiming infringement of its federally registered trademark WHERE GREAT TASTE IS PLANT-BASED.  The dispute arose when Dunkin’ used GREAT...

Burger King recently approached an Indian High Court with a trademark infringement suit seeking ex parte ad interim injunction against misuse of its famous marks through unauthorised registration of domain names. The Delhi High Court granted the injunction in May 2022...

More businesses forced to defend IP as trademark applications surge McDonald’s, Amazon, MasterChef all involved in UK disputes over brands The number of oppositions to UK trademark applications has more than doubled to a record high of 8,026 in 2021, up from 3,584 in...

Melanie Saubin, director at The Future Today Institute in New York City, predicts that by 2030 “a large proportion of people will be in the metaverse in some way”. Gartner, a research company, relaunches stating that a quarter of people will spend at least an hour a...

Legal mental health charity LawCare has extended its online chat service for legal professionals from one to four days a week. The charity, which offers free, confidential, emotional support to anyone working in the law, has been operating a helpline and peer support...

On January 14th, 2022, the EUIPO’s Opposition Division (hereinafter “the Office”) rejected the opposition filed by Louis Vuitton Malletier (hereinafter “Louis Vuitton”) based on Arts. 8(1) and 8(2) of the EUTMR[1] against the registration of the figurative European...

The International Trademark Association (INTA) has announced that it will hold its 145th Annual Meeting—the world’s largest event for brand owners and intellectual property professionals—in Singapore from May 16 to 20, 2023. This marks the second time INTA will be...

Charles Russell Speechlys have advised Symphony Holdings Limited, an investment holding company listed on the HK Stock Exchange, on the sale of its trademark portfolio of international footwear brand, PONY, in the Non-APAC region to Iconix Brand Group. The Firm also...

One of the UK’s leading trademark specialists says Prince Harry and Meghan Markle’s bid to trademark the word ‘archetypes’ after deciding to use it as the title for a new Spotify podcast makes ‘very good commercial sense’. Kate Cheney, the director of trademarks at...

Technological advances in the virtual world continue to impact how Intellectual Property is created, managed and protected London, U.K., May 3, 2022 – Clarivate Plc (NYSE:CLVT), a global leader in providing trusted information and insights to accelerate the pace of...

The International Trademark Association (INTA) today released its Report on the Taxation of Trademarks and Complementary Rights in Europe. Focused on the tax implications within the trademark lifecycle in the European Union, the United Kingdom, and Switzerland, the...

We all know the phrases ‘a problem shared is a problem halved’ or ‘it’s good to talk’ but the benefits in talking about how you are feeling go far beyond this. When we are in a difficult situation we lose our problem-solving abilities, it can be impossible to focus...

Humans are hard-wired to connect - we are tribal and social animals. We are biologically programmed to need other humans, and a feeling of belonging and connection drives our happiness. Despite this many of us will know what it’s like to be lonely, especially after...

In a clash between Magic Moment and Evening Moment, the Hon’ble High Court of Delhi has passed an injunction order against Sarao Distillery (OPC) Pvt. Ltd & and Greentech Blenders and Distillers (“Sarao Distillery & Anr.”) forcing them to stop selling its own...

The International Trademark Association (INTA) has filed an amicus brief in the United States Court of Appeals for the Ninth Circuit in VIP Products, LLC v. Jack Daniel’s Properties, Inc., No. 21-16969, marking the Association’s third amicus brief in this long-running...

New research by forward-looking IP firm Mewburn Ellis in conjunction with YouGov, indicates that a majority of 16-25-year-olds in Britain lack confidence in their knowledge of their intellectual property (IP) rights. The research, based on a survey of 212 British...

This year, World IP Day focuses on “IP and Youth: Innovation for a Better Future”. In a post-COVID-19 era driven by the growth and encompassment of technology, many aspects of innovation are changing. To mark the occasion, we asked our editorial board to reflect on...

The main essence of a trademark is its ability to distinguish the goods and services of one person from the other. A trademark could be made up of a word, a logo, a combination of these two, a slogan, a color…anything that could be able to clearly distinguish the...

When the Russian invasion of Ukraine began, Taras Kulbaba—a Ukrainian-born IP attorney living in Brussels—could not sit idly by. He gathered resources from his friends and colleagues, purchased first-aid and medical supplies, and personally drove the kits over a...

Rachel Wilkinson-Duffy has been elected as The Chartered Institute of Trade Mark Attorney’s (CITMA) President. Rachel, who is a partner at Baker McKenzie, begins her two-year term in the role immediately. She was voted in unanimously by CITMA’s Council and succeeds...

Red Bull suffered defeat in a recent trademark case before the Delhi High Court when they attempted to seek an injunction against PepsiCo India and its energy drink “STING” for alleged infringement and passing off. Red Bull’s application was based on the purported...

E-retailers boosting their portfolios with household names including Topshop Leading fast fashion brands evolving into fully-fledged fashion houses   The number of trademarks owned by online fast fashion retailers such as Asos, Boohoo and Shein has increased by 163%...

Not for the first time in his illustrious career, Ed Sheeran has been forced to swap the creative environment of a recording studio for the rather sterner surrounds of a courtroom. In the most recent edition of copyright claims against the international pop star, his...

Consultant lawyer numbers growing at a CAGR of 21%, compared to just 7% for mid-market law firms Consultant revenues have grown at a rate of 26% per year compared to 10% for the legal mid-market and 5% across the whole sector Arden Partners say the figures provide an...

Pejorative trademarks are distinctive signs that have a negative or unfavorable conceptual content. Some of these signs could be registered because they do not fall within the prohibitions that trademark laws around the world normally contain, such as those words that...

An interesting decision of the Board of Appeals of the EUIPO of December 15, 2021 (Volkswagen Aktiengesellschaft / Pinball Factory GmbH). It denies registration of a figurative EU Trademark that includes a representation of a van that is similar to the VOLKSWAGEN...

The International Trademark Association (INTA) hit a milestone on March 22nd for its 2022 Annual Meeting Live+, with more than 5,000 brand owners and intellectual property (IP) professionals from around the world registered to date for the event, taking place April 30...

New report from Mewburn Ellis Forward-looking IP firm Mewburn Ellis has released a new report looking at the rise of non-traditional trademarks, including shape, color and position marks.  The report examines the vital role that such trademarks can play in a brand...

Faye Waterford, CTC Legal Media Editor: Myself and my colleagues are very excited for the next month to fly past so that we can all meet again. So, 2022 marks the return for INTA’s annual meeting that features a fully in person event, why is this the right time for us...

Lusheng, a strategic partner of Rouse, has announced several landmark case wins for leading global children's entertainment company Spin Master. The victories are a positive sign of China’s commitment to tackle counterfeiting and IP infringement in the toy industry....

The case revolved around an opposition action before the UK Intellectual Property Office filed on 27 March 2019 by Match Group LLC against a UK Trade Mark Application filed for “LOVE AT FIRST SWIPE” in relation to a range of goods and services, including computer and...

Today, ECTA has launched the Early Bird Registration for the ECTA 40th Annual Conference ‘Designing the Future’ to be held in Copenhagen from 15-18 June 2022! The Trademark Lawyer Magazine is Media Partner of the event. REGISTER HERE by 21 April to get the Early Bird...

Entertainment One UK Limited, the British company that owns trademarks and copyright to infamous Peppa Pig, filed a claim with the Commercial Court of Kirov Region (Russia) against individual entrepreneur Ivan Vladimirovich Kozhevnikov for violation of the company’s...

Director General of the Anti-Counterfeit Group, Phil Lewis reflects that during the height of the pandemic, criminal networks made huge profits from counterfeiting and used the money to feed other forms of criminal activity. The latest Intellectual Property Crime...

United States Copyright Office’s Copyright Review Board rejected Steven Thaler’s second request to register a two-dimensional artwork named “A recent entrance to paradise” in a recent decision. Briefly, the board said that only a human can author a copyrighted work...

What do you think when you hear the word Metaverse? A parallel world, virtual reality or maybe it's something very futuristic or something kids do. I even once heard someone say, “It’s a fake world where you can buy stuff that gets delivered in the real world”. The...

Samsung filed a lawsuit against its former VP of Intellectual Property in Texas on 10 February 2022 alleging the illegal use of trade secrets by its former executive. Samsung filed the suit with the U.S. district court in Texas. Yet another trade secret dispute you...

This judgment concerns a three-fold application by the Defendants (together “KnitPro”) brought in the context of a long running trademark dispute relating to knitting needles. Background In 2013 the US-based Claimant’s predecessor began invalidity proceedings at the...

As the International Trademark Association (INTA) prepares to hold its first full-scale in-person event in nearly three years, more than 2,500 brand owners and intellectual property professionals from more than 100 countries have already registered for the 2022 Annual...

In times like this, the Beijing 2022 Olympic Winter Games came to many, like a breath of fresh air, celebrating the elite of the sports world, the city of Beijing and China, and, in extenso, the whole of Chinese culture. The Olympic Games are spectacular indeed, both...

Anaqua selected to provide Oblon, full-service IP law firm, with intellectual asset management solutions Anaqua, the leading provider of innovation and intellectual property management technology, recently announced that leading IP law firm Oblon, McClelland, Maier...

A new lawsuit involving Non-Fungible Tokens (NFTs)1 has hit the trademark litigation world. Renowned sports shoemaker Nike has sued StockX2 for using its famous trademarks to mint NFTs at a highly inflated rate without Nike’s consent. StockX is a Detroit based...

Effective immediately, Ricardo Fonseca de Pinho, based in Rio de Janeiro, becomes a new Senior Partner and Head of the Litigation Department at renowned IP Law Firm Luiz Leonardos & Advogados Luiz Leonardos & Advogados welcomes Ricardo Pinho, well-known...

Before the music-streaming giant Spotify found itself in the news for less pleasant reasons, it scored an important win before the U.S. Trademark Trial and Appeal Board last month. The Board sustained Spotify’s oppositions to trademark applications filed to register...

German luxury brand Hugo Boss is having an identity crisis/rethink and is diverging into two brands, BOSS and HUGO, complete with two new logos. BOSS will be aimed at the millennial market, aged 25-40, while HUGO will target Gen Z, aged under 25. Is this a strategic...

The question: The recent decision by the General Court in the so-called Moon Boot case (General Court 19 January 2022, Tecnica Group vs. EUIPO, T 483/20)  raises once again the question whether it is worth protecting shapes as a trademark within the EU, because the...

Hot on the heels of Colin v. Cuthbert the Caterpillar and “Glitter Globe Gin Gate”, M&S has kindly (if unintentionally) provided us with yet another brilliant case study in the world of Food & Drink copycats. Just when we were getting used to M&S being the...

In a recent decision of the US District Court for the Eastern District of Virginia, Alexandria Division, it was ruled that Gruyere cheese does not have to come from the Gruyere region, a canton of Fribourg, Switzerland – where Gruyere cheese has been produced...

ADGM chosen as the ideal platform for growth across emerging markets Gulf Capital, a leading thematic alternative investment firm in the GCC and Asia, recently announced that its portfolio company, Cedar White Bradley (CWB) Legal Limited, has opened its new...

Alt Legal, a leading provider of automated trademark docketing software to over 1,000 global organizations, announced its acquisition of Towergate Informatics’s §2(d) Citation Watch business. With this acquisition, customers of Towergate’s §2(d) Citation Watch will...

Womble Bond Dickinson announced that Fabio E. Marino, a leading intellectual property lead trial lawyer, has joined the Silicon Valley office as a partner in the Patent Prosecution and Litigation Group. Marino tries high-stakes patent, trade secrets, and copyright...

Forresters is pleased to announce the appointment of Tas Quayum as chief operating officer. Tas has been hired by Forresters as part of its commitment for growth, which includes streamlining processes and increasing collaboration across each of the firm’s teams and...

"With the rise in popularity of NFTs, it is expected that we will see a number of trademark, design and copyright infringements and passing off claims, as well as the spending of significant sums of money on potentially worthless purchases. In this case, Spice DAO...

Number of sole practitioners has dropped by 5% in the past six months alone  A rise in professional indemnity insurance  (“PII”) premiums is driving independent legal practitioners to become consultants for larger firms in increasing numbers, according to Taylor Rose...

Washington, D.C. - Sterne, Kessler, Goldstein & Fox is proud to announce the election of four new directors: Tyler J. Dutton, Ivy Clarice Estoesta, Michael “Mick” F. Gross, Ph.D., and Kristina Caggiano Kelly, effective January 1, 2022. Additionally, the firm...

Robert Reading, Head of Content Strategy at Clarivate: “In the trademark space we see two interesting trends developing in 2022. Firstly, trademark filing activity has been setting records around the world each year since 2010 driven in particular by domestic growth...

WASHINGTON, DC—Finnegan is pleased to announce the elevation of six new partners and welcomes two partners to the newly opened Munich office. Their practices cover the intellectual property law spectrum, worldwide. This includes patent, trademark, copyright, and trade...

In an era of technology, fourth industrial revolution (4IR) and digitization, it's been said that the internet has given users a voice so much so that geographical location is not a hinderance for communication, networking and building empires. Intellectual property...

The International Trademark Association (INTA) filed an amicus brief before the Court of Justice of the European Union (CJEU) on December 2, in Monz Handelsgesellschaft lnternational mbH & Co. KG v. Büchel GmbH & Co. Fahrzeugtechnik KG, Case C-472/21. The case...

In a first-of-its-kind event, the International Trademark Association and the Court of Justice of the Andean Community (Tribunal de Justicia de la Comunidad Andina [TJCA]) concluded their inaugural Moot Court Competition for law school students. Students from...

‘You belong with me’ sang Taylor Swift in 2009 on her second studio album Fearless. But in a bitter twist of copyright law, Swift’s Billboard-topping hit and her early back catalogue does not belong to her but to external investors. In a move that is ‘sweeter than...

Brand IP and analytics from Clarivate shed new light on the luxury brands sector; brands are growing their presence in non-traditional sectors and adapting to a new generation of consumers Clarivate Plc (NYSE:CLVT), a global leader in providing trusted information and...

What this new status means for the iconic dish and how can “Paella” name be protected against misleading uses. Paella – the iconic Valencian rice dish made with fish, meat or vegetables – has been officially recognised for its cultural importance. In October, the...

The International Trademark Association (INTA) is pleased to announce the election of Zeeger Vink as the 2022 President of the Association and the Chair of its Board of Directors. Mr. Vink is intellectual property director at MF Brands Group, the Swiss group that owns...

The International Trademark Association (INTA) has officially announced its 2022–2025 Strategic Plan, which will guide all Association initiatives over the next four years. The Plan builds on INTA’s progress in recent years in expanding its substantive and geographic...

The National Markets Group for IP Protection (NMG), a multi-agency focus group aimed at reducing the availability of counterfeit goods at physical markets and online, is warning consumers to watch out for fake, and potentially dangerous goods, that may appear on...

In a ground-breaking academic article, GeneriTrend Founder, Dr Cameron Shackell, points out a new type of genericness in trademarks involved in internet search. Dr Shackell first reminds us that the trademark system exists to reduce search cost in the economy. He then...

The International Trademark Association (INTA) has announced that it will be holding its 2022 Annual Meeting in Washington, D.C., April 30 to May 4—returning to an in-person format for the first time in more than two years. Unlike past in-person Annual Meetings, the...

Tina Turner is suing a German tribute act because she looks too much like the real thing. The case is unlikely to keep tribute acts off the UK stage, says media, entertainment and intellectual property lawyers Collyer Bristow. Howard Ricklow, Partner, Collyer Bristow...