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Trade Marks

Asian-American Rock Band The Slants Won Supreme Court Ruling in Trade Mark Dispute over Band Name

Asian-American rock band The Slants recently won a US Supreme Court Ruling in a trade mark dispute over the band’s name that some regard as an ethnic slur.

The band initially tried to register the band’s name as a trade mark at the U.S. Patent and Trademark Office (USPTO) but the application was denied because of the Lanham Act, that prohibits any trademark that could “disparage … or bring … into contemp[t] or disrepute” any “persons, living or dead,” as the court states..

Band members of The Slants said they wanted to reclaim the name that is often seen as a slur and that they had experienced as such in the past.  By reclaiming the name as their band’s identity they hoped to bring empowerment to the phrase.  In this recent ruling the Supreme Court deemed that members of the Asian-American rock band The Slants have the right to call themselves by a disparaging name.

Some say this decision is a victory for free speech and the decision from this case could inform arguments over many other future cases.  This Supreme Court ruling could have a broad impact on how the First Amendment is applied in other trade mark cases in the US.

Source: http://bit.ly/2sRE3cr

Brexit Negotiations will Begin on 19 June 2017


Michel Barnier who is leading the Brexit negotiations for the EU has confirmed that negotiations are due to begin on 19 June 2017 following the UK Parliament’s reconvention post the General Election.  Mr Barnier hopes to submit his first report to EU leaders regarding the status of the Brexit negotiations on 23 June 2017 which is exactly a year after the UK voted to leave the EU.

According to the report, negotiations are planned to take place in four-week cycles, each focusing on a different “key issue”.  Crucial topics of discuss will no doubt include the following:

  • the future relationship between the UK and the Unified Patent Court system.
  • Copyright
  • trade marks
  • designs
  • SPC’s
  • other aspects of IP law which are governed wholly or in part by EU legislation.

These Brexit negotiations have been said to be the most important negotiations in the UK’s history.

Source: http://bit.ly/2rm04jf 

China’s Tencent Filed the Most Global Trade Mark Applications in 2016

Trade mark research company TrademarkNow recently published research on the top 50 global trade mark applications filed in 2016.

Tencent Holdings Limited (a Chinese investment holding company with subsidiaries providing media, entertainment, payment systems, internet and mobile phone value-added services) valued at US$279bn was found to have filed the highest number (4,100) of trade mark applications in 2016.  In second place with 3,600 filings was Korean technology manufacturer LG Electronics and in third place with 3,500 filings was US media giant Time Warner.

There were 5 other Chinese companies: LeEco, Alibaba, Huawei, Leshi Internet Information and Technology Corp and Baidu that appeared in the global top 50 companies by number of trade mark applications in 2016 showing a trend for the success of Chinese companies.

In 2016 WIPO confirmed China had become the first country to file 1 million patent applications in a single year (looking at 2015 patent data).  China was found to be driving Asian-led growth in innovation worldwide with 62% of global filing activity for patents is in Asia, 55% of global activity in trade marks is in Asia and 68% of design applications are in Asia.  In 2016 3.7 million trade mark applications were accepted by the Chinese authorities, an increase of almost 30% from the previous year.  This was also 7 times the volume of trade mark applications filed in the United States.

The full report can be accessed here: https://www.trademarknow.com/trademark-industry-report

Source: http://buff.ly/2rdeX85 

Louis Vuitton to Take Trade Mark Case against My Other Bag to the US Supreme Court

European multinational luxury goods conglomerate LVMH (Louis Vuitton’s parent company) lost a number of trade mark lawsuits against American accessories brand My Other Bag founded in 2012 by Tara Martin.  My Other Bag prints animations inspired by iconic handbag designs on canvas tote bags which sell for approximately £30 to £45.  Louis Vuitton handbags by contrast sell for approximately £2,300 to £6,200.

The trade mark lawsuits between LVMH and My Other Bag started in 2014 when LVMH filed numerous claims for trade mark dilution, violation of fair use, dilution by blurring, trade mark infringement and copyright infringement against My Other Bag over its use of Louis Vuitton’s infamous Monogram and Damier product range.  LVMH lost the actions for the following reasons: lack of market proximity between the products and unconvincing evidence of consumer confusion.  In 2016 the Second Circuit Court of Appeals upheld a ruling that My Other Bag’s use of Louis Vuitton’s trademark could be classed as parody.

LVMH now looks set on taking the trade mark infringement claim to the US Supreme Court on appeal after My Other Bag asked the courts to make LVMH pay its legal fees of almost $1m.

Source: http://buff.ly/2rMxQMd 

Research with Chief Executives show Trade Mark Management Budgets Remain Broadly Steady

The intellectual property management company Lecorpio recently carried out its second annual “Trade Mark Management Study” where it asked corporate company chief executives about changes to their trade mark budgets (including both money and staff) and trade mark portfolio size over the past year.  73% of respondents said their portfolios had remained the same size while 27% said their portfolio had increased.  The results of the study found the following:

Money available this year compared to past year for

a) Registering trade marks

  • 82% of respondents said their budgets had remained the same
  • 18% said their budgets had increased

b) Trade mark policing

  • 64% said their budgets remained the same
  • 36% said their increased

 

  1. c) Trade mark watching and clearance
  • 90% of respondents’ budgets were the same
  • 10% budgets had increased

e) Trade mark prosecution

  • 18% said budgets had increased

Staff available this year compared to past year

  • 63% reported no change in the size of the internal team managing trade marks
  • 18% experienced cuts
  • 19% said they relied less on outside counsel for trade mark-related work
  • 9% increased outsourced work

The survey results suggest that although budgets are generally holding at stable levels they are also under increased scrutiny with executives under pressure to get a better return on investment.  Where there have been budget increases there is some evidence to suggest that these increases are not keeping pace with increases in portfolio size.  The tends for in-house vs outsourced work are interesting as for many work is being brought back in-house to save money while at other firms work is being outsourced where that is the more cost effective solution, particular for complex work.

 Source: http://buff.ly/2qJOv5F 

Company Chief Executives Now More Aware of Trade Marks Value for Businesses

There are over 55 million active worldwide trade marks with 6 million trade mark applications filed in 2015.  The volume of trade marks applications continues to rise with an average annual growth rate of 7% over the last two years.  The amount of trade mark infringement cases resulting in court action has remained fairly consistent from 2005 to 2015, mainly due to negotiation and settlement deals rather than a reduction in trade mark infringement actions.

A recently published survey conducted by market research company Opinium looked at US, UK, Italian, Spanish, French and German company chief executives’ views on the positive and negative values of trade marks from a brand enforcement and trade mark infringement stand point.

Of the surveyed companies, the findings were as follows:

  • Factors considered most important when applying for a new trade mark included competitive positioning (45%) and whether a mark is “unique” (41%)
  • 20% had a process to actively watch more than 75% of their trade marks, although 50% watched only 26-75% of their marks.
  • 66% had plans to launch new trade marks within the next year.
  • 80% said they would likely launch more trade marks if clearance process were simpler.
  • 53% have taken some form of action against third party infringers
  • 80% believe trade mark infringement of their trade marks is increasing.

Source: http://buff.ly/2pOCQOz

Small Brewery Forced to Rebrand Following Trade Mark Dispute Over ‘Moose’ Name

Small US based brewery ‘Mooselick Brewery’ which opened in 2015 was recently forced to change its name to ‘Granite Roots Brewing’ after being accused of trade mark infringement by the much larger Canadian Brewery ‘Moosehead Brewing’ founded in 1867 over the ‘Moose’ name.

Moosehead Brewing sent Mooselick Brewery a cease and desist letter in 2016.  The Canadian brewery objected to the name moose in their brand name as well as in a number of their beer names and the use of a moose image on their label and logo.  As Moosehead Brewing (Canada’s oldest independent brewery) had a history of filing similar trade mark litigation lawsuits to other breweries, Mooselick Brewery decided to rebrand instead of trying to fight the trade mark action.  Although the rebranding was quite costly and involved production of new logos, labels and promotional material it was still cheaper and quicker than waiting to fight the trade mark infringement claim.

Source: http://buff.ly/2pqZvUA 

Mars Sues Chocolatier CocoVaa for Trade Mark Infringement over Brand Name

Ms Syovata Edari, a criminal defence lawyer and owner of recently established chocolatier CocoVaa, is being sued by Mars Inc. in the US for trade mark infringement over the name of her chocolate business.  Mars Inc. says the name CocoVaa is too similar to its own line of chocolate-derived nutritional supplements called CocoaVia.

Ms Edari started her chocolate business in 2015 under the name of Gilded Artisan Chocolates but then changed the name a year later to CocoVaa as she liked the name and because the name combined two key elements that meant something to her:  Coco (for chocolate) and “Vaa” which was the nickname her father used to call her, resulting in a more distinctive and personal brand name for her business.

As a sole proprietor Ms Edari could have felt intimidated by a trade mark lawsuit from a multinational corporation but felt her experience as a lawyer allowed her to stand up to the charges which she beleives are unsubstantiated.  Mars. Inc.’s trademarked name “CocoaVia” covers the health market and is specifically for nutritional supplements and powders while Ms Edari’s trademarked name of CocoVaa is covered solely by the confections class.

Source: http://bit.ly/2ntSl1D

Bentley Motors Loses Invalidity Trade Mark Action against Bentley Clothing at UKIPO

British manufacturer & marketer of luxury cars Bentley Motors recently lost a trade mark invalidity action (filed in 2015) against UK based Bentley clothing company over the use of the “Bentley” trade mark on clothing lines.

Bentley Motors (launched in 1919), with a famous reputation in the luxury car market, launched a clothing line in 2005.  The carmaker who owns a “Bentley” trade mark (EU 3925187) in classes 14 & 18 covering jewellery and leather accessory goods felt that Bentley clothing, launched in 1962 but did not file their “Bentley” trade mark for clothing, footwear and headgear until 2009, were infringing the goodwill that they had built up over time with consumers and that there could be confusion between the service offerings with the same name and now in similar markets.

In its recent decision the IPO said that Bentley Motors had failed to provide evidence of use of its mark for any of the goods relied on (jewellery and clothing).  The IPO also stated that the use of the mark by Bentley clothing would not take unfair advantage of Bentley Motors.

Source: buff.ly/2n6BTRp

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