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Category Archives: Trademarks & Brands

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Investing in China’s TMT sector: What you need to know

China is a market that represents a paradox for many telecoms, media and technology (“TMT“) companies. On the one hand it offers the promise of almost unlimited growth potential if you get the product right, but on the other it presents huge challenges from the regulatory and compliance perspective in terms of establishing a foothold

How blockchain might change the whole fashion industry – and safeguard the authenticity of your goods

So far you have probably only heard of blockchain in connection with financial transactions and Bitcoins. Well, that should change soon. Blockchain is the catch-all term for technology that permanently records transactions in a digital, tamper-proof database. Information is distributed across a network of computers rather than being controlled by a single entity, is updated

CJEU: Trademark use in clinical trials, no bar to non-use revocation

This month, the Court of Justice of the European Union (CJEU) addressed a case of particular interest for pharmaceutical companies that are in the process of developing a new product. Regulatory and commercial considerations may cause marketing authorisation for the product to follow different timelines across jurisdictions. The Viridis Pharmaceuticals Ltd. (C-668/17 P) judgement, handed

CJEU: Sweet victory for well-known trademark against registered design

In its judgment C-693/17 earlier this year, the CJEU confirmed a decision of the GC in design invalidity proceedings, in which the proprietor of a trademark protecting the image of product packaging successfully took action against the filing of a design featuring similar packaging filled with coloured sweets. Background The plaintiff manufactures coloured oval sweets

EU: CJEU to shed light on colour per se

During the ECTA annual conference in Edinburgh last week, Andreas Renck spoke about the ongoing battle in registering and defending colour per se marks, in particular the question of how to correctly represent the marks on the register. Is it sufficient when filing a colour per se mark for two colours to just indicate the percentages

Supreme Court Strikes Down Bar to Registration of “Immoral” or “Scandalous” Trademarks

Today the US Supreme Court announced its opinion in Iancu v. Brunetti, holding that the Lanham Act’s provisions barring the registration of “scandalous” or “immoral” trademarks are unconstitutional under the First Amendment. The facts are straightforward:  Erik Brunetti applied to register the trademark FUCT for millennial street clothes.  The USPTO denied registration under Section 2(a)

The A-CBDs of Registering Hemp-Related Trademarks: New Guidance from the USPTO

Brand owners seeking to register cannabis-related trademarks take note: the U.S. Patent and Trademark Office (USPTO) recently issued guidance regarding the effects of the 2018 Farm Bill on the registration of trademarks for goods and services involving hemp. As background, the previous definition of “marijuana” in the federal Controlled Substances Act had a limited exclusion

Post-INTA roundup: China’s evolving IP landscape

During this year’s 2019 INTA Annual Meeting, our Greater China IP team discussed the following key issues around China’s evolving IP landscape. What’s in store for brand owners in China? Partner, Helen Xia discussed recent updates on strategies to curb trademark hijacking and factors leading up to this phenomenon. In recent years, China has had a

Germany: Filling a trademarked dispenser with goods from third-party manufacturers may constitute trademark infringement – Tork

In the case “Tork”, for which the judgement was released earlier this year, the Federal Supreme Court (FSC) had to decide to what extent “aiding and abetting trademark infringement” is constituted if paper towels are advertised as being suitable for a particular dispenser. Background The plaintiff sells hygiene products worldwide, including a trademark-protected paper towel

U.S. – Bankrupt brands can’t revoke trademark licenses, says SCOTUS

The U.S. Supreme Court has ruled that bankrupt trademark licensors cannot use federal bankruptcy law to rescind the rights of their trademark licensees to continue use of duly licensed trademarks. The decision settles a long-simmering circuit split on a question that the International Trademark Association has labelled “the most significant unresolved legal issue in trademark

Germany: Trademark exhaustion not overcome by unusual resale packaging – beauty for less

In its case “beauty for less”, for which the judgement was released earlier this year, the Federal Supreme Court (FSC) ruled that a trademark owner cannot oppose resale advertising with the argument that the advertising is unusual in the industry sector. Background The plaintiff is a licensee of several European Union trademarks claiming protection for

Hogan Lovells a sponsor at the WPB at INTA 2019, Julia Anne Matheson and Anna Kurian Shaw recognized

We were delighted to be one of the sponsors of The Women’s Power Breakfast (WPB) at the INTA 2019 Annual Meeting. IPMT partners, Julia Anne Matheson  and Anna Kurian Shaw attended the invitation-only event on the firm’s behalf on Wednesday, May 22.  The Women’s Power Breakfast, the brainchild of former INTA Executive Director Robin Rolfe,

USPTO reiterates commitment to detect and prevent fraudulent foreign trademark applications

The United States Patent and Trademark Office (“USPTO”) has recently reiterated its commitment to stemming the tide of inaccurate and fraudulent trademark applications originating primarily from China.  On May 9th, the Director of the USPTO, Andrei Iancu, testified before the U.S. House Subcommittee on Courts, Intellectual Property, and the Internet, and fraudulent foreign trademark applications

Lightning fast IP reform in China: Trademark Law and Anti-Unfair Competition Law amended

On 23 April 2019, both China’s Trademark Law (“TML“) and its Anti-Unfair Competition Law (“AUCL“) were amended.  The amendments to the TML are aimed at curbing bad faith trademarks and increasing damages for infringement, while the changes to the AUCL are aimed at improving the protection for trade secrets. The changes to the TML will

Webinar recording: From homes to stadiums – Brand presence in esports

Last month, our IP Outlook webinar series looked at the emerging opportunities and risks for brand owners exploring opportunities in the esports market: from innovative advertising and marketing activities during tournaments and within games, sponsorship of tournaments or teams, to merchandise and fan items. The recording of the webinar is now available to watch here. What

N.D. California Straightens Out Competitor’s Use of Infringing Hashtags: #newdevelopments in Using Trademarks as Hashtags

The Northern District of California recently released an order that sheds new light on how courts grapple with the constantly-increasing use of trademarks as hashtags. Align Technology, Inc., provider of the Invisalign teeth-straightening-system, also produces the iTero Element intraoral scanner that allows dentists to obtain three-dimensional scans of a patient’s mouth, teeth, and gums. To

Influencer promo guide: Best practices for drug and device firms

In our “Influencer promo guide: Best practices for drug and device firms”, we offered a list of best practices for medical device and pharmaceutical companies interested in taking advantage of the benefits of social media influencers for advertising their products, while adhering to FDA regulations. How can these companies be mindful of FDA rules while

EU: “Der Grüne Punkt” is not a trademark used for packaged goods

“Der Grüne Punkt” is a concept that presumably everyone in Germany is familiar with; recently, the financing symbol for participation in the dual collection and recovery systems was the subject matter of proceedings before the General Court (GC). The General Court’s main task was to examine the question of whether proven use of the trademark