The Trademark Lawyer

Government launches consultation as work on new trademarks and designs services starts The UK Government has launched a second consultation on proposed changes to allow the Intellectual Property Office to deliver better digital services. In July, the government...

Mattel’s Barbie doll is an icon.  Generations of children have been exposed to this doll, and pop culture acknowledges it as a symbol of fashion, beauty, and female empowerment.  Mattel has spent over half a century connecting Barbie with the color pink, and this...

Based and organized in Switzerland, the International Ski and Snowboard Federation (FIS) is responsible for and setting the International Competition Rules (ICR)[1] and for the Olympic skiing disciplines[2] including alpine ski, cross-country, ski jumping, Nordic...

In the ongoing pursuit of empowering entrepreneurs and intellectual property (IP) innovation, the International Trademark Association (INTA) has opened registration for its second Open Innovation Challenge (OIC). The OIC is designed to rapidly propel start-up and...

New York, New York—August 10, 2023—The International Trademark Association (INTA) has launched the 2023 Asia-Pacific Moot Court Competition. Taking place in Singapore from September 1 to 2, the competition will mark a return to an in-person format.  INTA began hosting...

In a surprising turn of events, Burberry, the renowned British fashion brand, has found itself entangled in a potential legal dispute with Mattel, the maker of the iconic Barbie dolls. It all started when Burberry applied with the US Patent and Trademark Office in...

TACO TUESDAY is officially free!  In May 2023 Taco Bell filed a Cancellation action with the Trademark Trial and Appeal Board and launched a star-studded ad campaign claiming that the registered TACO TUESDAY trademark should be cancelled so everyone could freely use...

In a ground-breaking US lawsuit, authors Mona Awad and Paul Tremblay have sued OpenAI for copyright infringement, accusing the AI company of ‘training’ its language model on ChatGPT using the authors’ copyrighted works without permission. This legal action not only...

Effective August 10, 2023, and based on Ministerial Decree No. 56 of 2023, Qatar is adopting the Gulf Corporation Council (GCC) Trademark Law and its Implementing Regulations, replacing its current Trademark Law (Law No. 9 of 2002 with respect to Trademarks, Trade...

The UK government has published its response to the transformation consultation which ran in late 2022 and ended on 6 January this year. The government sought views on a number of changes related to the Intellectual Property Office’s (IPO) new digital services, and...

The Board of Appeal (BoA) has upheld the EUIPO examiner’s decision to reject EUTM Application No. 18622650 for the contested sign below due to a lack of distinctive character (Article 7(1)(b) EUTMR) for all the services applied for, namely, various financial, real...

Intellectual property encompasses a range of rights that safeguard intangible assets, providing creators with exclusive control over their creations for a specified period and includes trademarks, copyrights, patents, industrial designs, trade secrets, and geographic...

A recent opinion by the US Supreme Court (“SCOTUS”), held that “when an alleged infringer uses a trademark as a designation of source for the infringer’s own goods, the Rogers test does not apply” and remanded the issue of trademark infringement back to the lower...

For over a century, the Fruit Union Suisse (“FUS”), one of the oldest fruit farmers organizations in Switzerland, has been representing Swiss fruit growers and advocating for their interests. The FUS displays a logo featuring a red apple adorned with a white cross,...

The recent lawsuit filed by the National Music Publishers on behalf of 17 music publishers against Twitter for alleged copyright infringement should come as no surprise, as Twitter is the largest social media platform that has completely refused to enter into a...

Candymaker Wrigley and Terphogz, LLC have reached a settlement in a high-profile lawsuit over Terphogz’s use of the mark ZKITTLEZ on cannabis products and other merchandise such as clothing (WM. Wrigley Jr. Co. v. Terphogz, LLC, No. 21-CV-02357 (N.D. Ill. July 3,...

Background In an appeal filed by the instant delivery app, Blinkit (https://blinkit.com/), the Karnataka High Court has set aside the impugned order passed by the Trial Court, wherein the Appellant, Blinkit, was, prima facie, found to be infringing the mark “BLINKHIT”...

The global market is currently threatened by trademark trolls. These entities try to exploit legalities to profit from established brands, causing harm to brand reputation and finance. A trademark troll is an entity or individual that maliciously uses or registers a...

In agriculture, IP attorneys typically counsel entrepreneurs and plant breeders to protect plant varieties through plant patents, utility patents, and/or plant variety protection certificates. However, Little Leaf Farms has recently filed an application with the USPTO...

From ESPN to Yuga Labs – Software, media, fintech and finance, and electronics brands comprise nearly one-third of the list London, UK, June 29, 2023 – Clarivate Plc (NYSE:CLVT), a global leader in connecting people and organizations to intelligence they can trust to...

The “YZY” in YZY SOCK SHOES likely immediately brings Kanye West to mind for most because of West’s well-known Yeezy brand. But in case you do not know who Kanye West is, a bit of background: West is a well-known rapper, fashion designer and entrepreneur. West has...

Federal Decree-Law No 36 of 2021 (“Trademarks law”), amply provides for the protection of well-known marks. Article (4)(1), says that if a popularity of a mark has crossed the boundaries of a country where it was registered, any same or similar mark would not be...

New York, New York—June 28, 2023—The International Trademark Association’s (INTA) Trademark Administrators and Practitioners (TMAP) Meeting will be held in Denver, Colorado (USA), from October 1 to October 3. The TMAP Meeting is the premier event for trademark...

The last time the US Supreme Court considered whether a creative work qualifies as a transformative use under the Copyright Act was nearly 30 years ago, in Campbell v. Acuff-Rose Music, Inc. In the Campbell decision, the Court stated that the central inquiry of...

Introduction In the realm of music, discussions about similarities and influences between songs are not uncommon. One such case that attracted significant attention was the comparison between Marvin Gaye's iconic track "Let's Get It On" and Ed Sheeran's chart-topping...

It is commonly known that some foreign companies left Russia following the onset of events in the Ukraine. That led to mass filing of trademark applications reproducing or imitating the brands of the companies that left Russia. That raised concerns among trademark...

The phrase “Taco Tuesday” elicits a visceral reaction in foodies and families alike.  What comes to mind when you hear it?  Crunchy or soft tacos?  Queso?  Margaritas?  Does a specific restaurant come to your mind?  If you answered “no” you may be among those that...

Under the law of trademarks, the threshold for extending exclusive rights to the shape of a product is quite high. The shape by itself should immediately be identifiable with the source of the product. For trademark registration of the shape of a product, the same can...

80% of Europeans agree that counterfeits support criminal organizations and ruin businesses and jobs. Two out of three also consider fakes a threat to health, safety, and the environment. However, a third of Europeans find it acceptable to buy fakes when the price of...

New York, New York—June 13, 2023—The International Trademark Association (INTA) has filed a statement in intervention before the Court of Justice of the European Union (CJEU) in European Union Intellectual Property Office (EUIPO) v. Nowhere Co. Ltd (CJEU Case C-337/22...

Following Marks & Spencer’s well-publicised cake dispute with Aldi over Colin the Caterpillar v Cuthbert the Caterpillar, another of M&S’ sweet treats, Percy Pig, recently made the news after M&S sent a letter to Fabio’s Gelato (a gelateria in Hitchin and...

Did an entity using a trademark under a non-exclusive license granted by the rights holder have the right to register the trademark and subsequently request others to cease using it? The General Court of the European Union issued a judgment in the dispute over the...

  93% of Chartered Trade Mark Attorneys who responded to a survey have called for the Intellectual Property Office to tackle the issue of unregulated and unqualified representatives. 85% of respondents said that the issues posed by those representatives are...

Coleen Rooney is the wife of ex-England striker Wayne Rooney, now the manager of D.C. United in the US. Rebekah Vardy is the wife of another ex-England striker, Jamie Vardy.  The British tabloids often run stories about the celebrity partners of successful footballers...

The dating site operator, Match Group, which owns services such as Match.com, Tinder and Hinge, was successful in defending an appeal by online dating service, Muzmatch, of the High Court finding that service Muzmatch had infringed Match's trademarks and passed them...

The Dimopoulos Law Group, a Las Vegas-based personal injury law firm, filed a lawsuit in the United States District of Nevada against the National Football League (“NFL”) and the Las Vegas Raiders on March 1, 2023. After receiving a cease-and-desist letter from the...

Marks & Spencer (M&S) have made a U-turn after a new product ‘rips off’ the name of a London pub. Founded in 1884, M&S has grown into a household name as the multinational retailer selling a wide range of products including food, homeware, and clothing....

On April 21, 2023, the US District Court for the Central District of California rendered a very important decision on the plaintiffs’ motion for a summary judgment in the matter of Yuga Labs, Inc. v. Ripps, et al., involving the questions of protection and...

Katy Perry, the world-famous pop singer, has lost a trademark dispute in Australia with a local fashion designer who shares the same name. In 2019, the Australian clothing designer, Katie Perry, sued the "Firework" star after she ignored her trademark rights and sold...

International Trademark Association to Head to Atlanta, Georgia for 2024 Annual Meeting  New York, New York—May 17, 2023—The International Trademark Association (INTA) announced today that it will hold its 146th Annual Meeting, the world’s largest event for brand...

Anxiety is the theme of this year’s Mental Health Awareness Week (MHAW) and LawCare, the legal mental health and wellbeing charity, are highlighting the prevalence of anxiety in the legal community. Anxiety is one of the top three reasons people working in the law...

Last minute deadlines, billing targets, Friday 4pm client’s request, politics, different time zones, networking, taking time off and then coming back to five-hundred unread emails, heavy workload, expected performances, long working hours, school runs, increased...

The hand-down of the judgment in the case of Evans v John Lewis PLC and Another (2023) at the beginning of April caused a flurry of media excitement. The story was an eye-catching one: at its heart was the content of the John Lewis Christmas advert, the release of...

Lidl has won its claim for trademark infringement against Tesco concerning the latter's use of a yellow circle within a blue square for its Clubcard Prices scheme. Lidl argued that such use infringed its trademark registrations for a similar logo with and without the...

‘What’s in a name?’ Today – literally everything! Brands contribute immensely to a company’s assets. Companies spend heavily on building their brands and securing statutory protection to safeguard them from infringement and deterring third parties from making...

The propriety or otherwise of the underlying issues raised pertaining its registration The excitement that erupted at one of the polling units during the Nigerian Presidential Election held on 25 February, 2023, is now about to play a phenomenal role in the...

When dogs and whiskey are involved, it might be time to listen to the Supreme Court. On March 22, 2023, the Court held oral arguments for Jack Daniel’s Properties Inc. v VIP Products. For months, litigation over “Bad Spaniels” has sparked questions about the...

The United States Copyright Office recently launched its “Artificial Intelligence Initiative,” set to “examine the copyright law and policy issues raised by artificial intelligence.” The initiative comes as a “direct response” to “striking advances in generative AI...

Each year, on April 26, World Intellectual Property Day is celebrated in a continued effort to raise awareness and understanding of the value IP offers. This year’s focus is ‘Women in IP: Accelerating innovation and creativity’, intended to highlight the incredible...

Welcomes Mr. Edwin Tong SC, Singapore’s Minister for Culture, Community and Youth, and Second Minister for Law as its Guest of Honor New York, New York—April 20, 2023—The International Trademark Association (INTA) has announced the Opening Ceremony Guest of Honor and...

In the recent decision of Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc & Anor, Mr Justice Miles held that the logo of footwear manufacturer Dream Pairs did not infringe Umbro’s double diamond logo. The owners of the Umbro brand had argued that the...

The summary In a groundbreaking intellectual property (“IP”) case set in provincial Ba Ria – Vung Tau (Vietnam), a Vietnamese national and company director were sanctioned for ‘infringing on industrial property rights’ of Saigon Beer-Alcohol-Beverage Joint Stock...

In March 2023, Spotify made the announcement that it would be removing Bollywood songs from its platform due to licensing and copyright issues. The decision was met with mixed reactions from users worldwide, with some expressing disappointment, while others supported...

The news of the court action between an actress, Ann Njemanze, and the producer of the movie, Domitilla, is agog in the Nigerian entertainment industry. In sum, having acted in the 1996 movie, she was approached for a role in the sequel, Domitilla: The Reboot, but the...

Adidas has officially withdrawn its opposition to a US trademark filing by the Black Lives Matter movement after initially claiming that the trademark would cause confusion with its own three-stripe design and dilute its distinctiveness. The US application (Serial No....

The trademark dispute between Mariah Carey’s company, Splashes Beverage, and Darker Still Spirit Company, an Irish whiskey-based liqueur company, has finally come to an end. After a lengthy battle, it has been announced that Darker Still Spirit Company has agreed to...

The IPO has published updated trademark guidance in respect of the classification of NFTs, virtual goods, and the Metaverse. This comes as recent analysis by the IPO of around 4.1 million trademark applications on its database - using search terms such as ‘virtual...

New York, New York—April 5, 2023—As of today, 6,909 brand owners and practitioners, government officials, and academics from 139 jurisdictions have registered to participate in the International Trademark Association’s (INTA) 2023 Annual Meeting Live+, which takes...

The term Hair Spa is synonymous with treatment, conditioning and nourishment of damaged hair. This term became the heart of the battle between the world renowned cosmetic brand L'Oréal and Pornsricharoenpun Co. Ltd., a Thailand based company. The Delhi High Court had...

In 2019, Dutch model Maartje Verhoef made history by becoming the first person to successfully register her face as a trademark. The application was filed with the European Union Intellectual Property Office (EUIPO) and was approved in April 2020. This landmark...

 To protect the added value of any product Made in Switzerland, Of Switzerland, direct or indirect references to Switzerland or showing the Swiss white cross on a red background, the criteria for the use of such indications of source had been clarified and their...

In a trademark suit filed by TTK Prestige Ltd, the Delhi High Court barred K. K. AND Company Delhi Private Limited from using the mark 'PRESTIGE' in relation to gas stoves or any kitchenware or cookware. TTK Prestige Limited(TTK Prestige) is an Indian company that...

What is WWE? WWE (World Wrestling Entertainment) can be traced back as far as 1952 and is an American professional wrestling company. It identifies itself as a ‘global integrated media and entertainment company’, and has features within films, American football, and...

New York, New York—March 10, 2023—The International Trademark Association (INTA) has filed an amicus brief with the United States Court of Appeals for the Federal Circuit in Crocs, Inc. v. Effervescent, Inc. et al., No. 22-2160. The case involves the extent to which...

Lord of the Bins!! A very creative name don’t you think?? However… The waste collection company based in Brighton have been approached by the legal team for the Lord of the Rings franchise and have asked them to change their name and their strapline “One Ring to...

Trademarks are one of the fastest growing and developing IPs nowadays. That’s why various organizations are engaging themselves in trademark-oriented deals. Trademarks provide the proprietor with exclusive rights and benefits and so, they are becoming a huge source of...

Working with others is a free online course designed to provide individual legal professionals with valuable guidance on working effectively with clients, colleagues and others. It includes written information, a range of interactive activities, and audio-visual clips...

While many of us enjoyed a romantic evening with our significant others on Valentine’s Day this year, the American rapper Marshall B. Mathers III (aka Eminem) had some not-so-romantic plans. On February 14, 2023, Eminem took legal action to protect his trademark...

Counterfeiting costs the global economy $500 Billion annually. One of the biggest trends that has contributed to the rise in counterfeit and pirated products is simply the expansion of ecommerce, online shops, and purchasing products through social media. It's very...

The food industry is a highly competitive market where businesses aim to establish their own brand and reputation. Trademarks play a significant role in this by allowing businesses to protect their unique logos, names, and other identifying elements from being used by...

A jury in federal court in New York found fashion designer Thom Browne’s company did not infringe or dilute Adidas’ Three-Stripe trademark by selling “tailored sportswear” with four horizontal stripes. The backstory Adidas is known as “The Brand with the Three...

Nearly four years after first filing applications to register 100% THAT BITCH as a trademark for use in connection with clothing, Lizzo has won approval from the Trademark Trial and Appeal Board (TTAB) for her applications to proceed to publication.  While the journey...

The High Court in Bangladesh on 6 February 2013, comprised of Madam Justice Naima Haider and Mr. Justice Md. Khairul Alam, has ruled that inaction and failure of Customs Authority, Telecommunication Regulator (BTRC) and Law Enforcement Agencies to restraint imports,...

There are several dangerous myths circulating about trademarks and how they work. One of the myths I encounter most often relates to likelihood of confusion analysis. Trademark owners, especially small business owners, commonly believe that if their products or...

The latest practice of EUIPO and countries which harmonized their practice in the field of trademarks establishes a new concept and rules laid down in three important aspects of trademark registration: PRIORITY - a trademark in black and white from which priority is...

Current political situation added shades to intellectual property cases. Some foreign companies left the Russian market and this makes us cast a new look on the situation on the Russian market. Contrary to the opinion of analysts Russian intellectual property has not...

Recently, China National Intellectual Property Administration (CNIPA) issued a notice on public solicitation of comments on the Revised Draft of the Trademark Law (Draft for Comments). China's trademark law is facing the fifth revision since its promulgation in 1983....

The International Trademark Association (INTA) has filed an amicus brief in the United States Supreme Court in Jack Daniel’s Properties, Inc. v. VIP Products, LLC, No. 22-148, marking the Association’s fifth amicus brief in this long-running dispute. The case involves...

The Japan Patent Office (JPO) dismissed an opposition claimed by Monster Energy Company against TM Reg no. 6471165 for the stylized PREDATOR mark in class 30 by finding dissimilarity of goods between ‘coffee, tea, cocoa’ and ‘carbonated beverages, energy drink’ in...

LawCare, the mental health charity for legal professionals in the UK, today released new support statistics and its impact report LawCare's 2022 impact report shows that nearly a quarter (22%) of people contacting LawCare for support were primarily concerned about...

The automotive business Mercedes Benz is following the hype, moving towards the metaverse by filing trademark applications for ‘Mercedes Benz’, ‘Mercedes’, ‘S-Class’, ‘G-Class’, and ‘Maybach’ with the United States Patent and Trademark Office (USPTO) claiming, among...

The Delhi High Court has denied Capital Food Private Limited’s (‘Capital Food’) request for an interim injunction against Radiant Indus Chem Private Limited (‘Radiant Indus’) over the use of the term “Schezwan Chutney” for its products. The Court ruled that the mark...

Are there really IP lessons to learn from the glamorous adventures of a girl working at a marketing agency in Paris?  Yes, yes there are! One of the joys of being a trademark lawyer is that the fruits of your labor can be seen on the high street, in magazines and all...

Harry Styles, arguably one of the most recognizable names and faces in pop music, has taken legal action relating to a significant issue with the music industry. The music industry is an all-consuming one, in which followers of their favorite artist don’t stop with...

Industry representatives call for collaborative effort to redress the gender imbalance Hong Kong, 12 January 2023 – Mayer Brown and Women In Law Hong Kong (WILHK) today announced the findings of a joint survey aimed at exploring gender biases in Hong Kong's legal...

Adidas and luxury fashion brand Thom Browne are engaged in a jury trial over Thom Browne’s use of a four-stripe design on apparel and footwear. Adidas is seeking nearly $8 million in damages alleging Thom Browne’s use of its four-stripe design infringes and dilutes...

The recent litigation over the iconic Indian trademark ‘Yezdi’ has brought legal issues related to ownership of a trademark by a company under liquidation to the limelight. ‘Yezdi’ bikes, manufactured by Ideal Jawa (India) Pvt. Ltd. (hereinafter referred to as “Ideal...

New York, New York—January 11, 2023—The International Trademark Association (INTA) has officially opened registration for the 2023 Annual Meeting Live+. The gathering will be the Association’s 145th Annual Meeting, featuring an in-person event at Singapore’s renowned...

A local Minneapolis startup company received a cease and desist letter from the J.M Smucker Company (Smucker’s) in December 2002, and the internet has erupted over this simple act. Even IP attorneys seem to have forgotten that trademark owners have an affirmative duty...

New York, New York—December 27, 2022—The International Trademark Association (INTA) filed an amicus brief in the United States Supreme Court in Abitron Austria GmbH v. Hetronic Int’l, Inc., No. 21-1043, urging the Court to adhere to its ruling in Steele v. Bulova...

Is your love for cats shackled by a fear of commitment? Dreams of adopting an eternal, one-of-a-kind cat have been fulfilled by Daper Lab Cryptokitties- a blockchain-based game, wherein all the cryptokittes are essentially NFTs(Non-Fungible Tokens). Gaming industry is...

Iceland Foods Limited recently lost a battle in the long lasting trademark war of the Icelands, retailer and country. By way of decisions on 15 December 2022, the Grand Board of Appeal of the European Union Intellectual Property Office (‘EUIPO’) rejected Iceland Foods...

Technically, smell does classify as being one of the non-traditional trademarks under laws of few countries such as USA, UK, Australia, Canada, New Zealand, Korea, Peru, Colombia, France. The UAE trademarks law i.e., Federal Decree-Law No (36) of 2021, also provides...

Rock band Guns N’ Roses filed a trademark infringement suit in a California federal district court against a Texas-based store that sells guns and rose flowers under the name Texas Guns and Roses (or, <Texas Guns and Roses.com>). See generally, Complaint, Guns...

Background Pest Control Office Limited (the “EUTM proprietor”), on behalf of Banksy, sought to register the figurative mark of a monkey wearing a sign (figure 1) in a number of categories, including games, clothing and education. The mark was registered on 8 June...

Santa Claus’ suit is protected as a registered community design. This may be a serious problem for business Why will this year’s Christmas be unexpectedly difficult for everybody profiting from Santa’s outfit? As it turns out, a Polish entrepreneur successfully...

In an important decision for trademark owners and practitioners, issued by the Court of Appeal on 2 November 2022 in Lidl Great Britain Ltd. v. Tesco Stores Ltd., Tesco has been permitted to continue to argue at trial that a wordless version of Lidl's logo was...

After severing its wildly successful Adidas Yeezy partnership with artist and rapper Ye, formerly known as “Kanye West,” Adidas announced that it will no longer produce Yeezy branded products, including the popular Adidas Yeezy sneakers.  Adidas has expressly stated...

Talking IP is a new podcast for intellectual property (IP) professionals showcasing compelling conversations that take you inside the professional lives and careers of global IP leaders and entrepreneurs. Hosted by Australian Patent Attorney and IP Entrepreneur Justin...

When does copying become intellectual property infringement?  If you work with fashion brands or consumer products companies, the line between genuine inspiration and a lawsuit waiting to happen may be something you think about daily.  A recent lawsuit filed by...

As the end of 2022 approaches, important changes are coming to the trademark prosecution process before the United States Patent and Trademark Office (“USPTO”). Trademark practitioners and applicants must be aware of the new deadline, effective December 3, 2022, and...

New report from Mewburn Ellis   A new report released today emphasizes that pharmaceutical trademark holders will have to keep a close eye on developments in the UK trademark exhaustion regime, to ensure that they are taking all appropriate steps to protect their...

The International Trademark Association (INTA) is celebrating the world’s most popular sporting event, the FIFA World Cup, with the release of its World Football Summit Trademark and IP Toolkit, a practical resource for football (soccer) organizations and brands to...