22 Mar 2019
On December 20, 2017, the Court of Appeal in Stockholm, Sweden, convicted 20 people for fraud in relation to sending fake invoices to applicants who had previously applied to register Community trademarks with the Office for Harmonization in the Internal Market (“OHIM”, now the European Union Intellectual Property Office (EUIPO)). From 2011 to 2014, the fraudsters sent hundreds of fake invoices under the misleading name “OMIH” that appeared to have been sent by the OHIM to recipients in various countries.
22 Mar 2019
Like any proprietor wishing to protect its trademark rights, those adopting marks having “shock value” may also create valuable rights and wish to pursue stronger, enforceable trademark rights through registration. These parties have faced obstacles as IP offices in various countries enforce the provisions of their trademark laws that relate to immoral or scandalous marks. Arguments related to “free speech” have often been used as a defense.
5 Nov 2018
Like Canada, Mexico is introducing some significant substantive and procedural changes to its trademark law. The changes are to align its practice with that of its foreign commercial partners and are expected to come into force 60 working days from the May 18, 2018 publication in the Mexican Federal Gazette.
15 Jun 2018
I recently had the pleasure of representing IPIC at the 28th Session of the Committee of Experts of the Nice Union (the Committee) held in Geneva, Switzerland, from April 30 to May 4, 2018.
15 Jun 2018
The Venezuelan Patent and Trademark Office has temporarily suspended payment of official fees by foreign applicants, pending the publication of new official fees. As a result, some services including renewals, final granting taxes, patent annuities, and changes of ownership have been halted. Other services, including trademark filings, remain unaffected, as do proceedings involving domestic applicants, or those paid in local currency.
11 May 2018
It is now a requirement in Iraq to make a request for examination, which appears to involve a search, prior to filing a trademark application. If the examination results are clear, an application can be filed together with the examination results, and the application will be accepted and proceed to publication immediately. If the results are not clear, an application can still be filed, however, it appears that an appeal will be necessary to try to overcome the negative aspects of the examination report.
11 May 2018
In January 2015, the Canadian Border Services Agency (CBSA) introduced the Request for Assistance (RFA) Program as part of an effort to crack-down on counterfeits crossing Canadian borders, to allow Intellectual Property Rights Holders the opportunity to institute legal action against any importer found through the program, and the ability to arrange for destruction of counterfeit products in a timely manner.
8 Feb 2018
There has been lots of activity on disparaging marks in the United States and Canada. Most notable is the US Supreme Court decision in the Slants case dealing with the “disparagement” provisions of Section 2(a) of the Lanham Act. Other cases dealing with the "immoral, deceptive, or scandalous matter” provisions of Section 2(a) are also making their way through the courts in the US. In Canada, there have been several cases before the courts and Human Rights Tribunals dealing with names and logos of sports teams. This article briefly looks at the outcome of these specific cases, as well as provisions of the Canadian Trademarks Act relevant to disparaging marks.
26 Jan 2018
Becoming a successful IP practitioner requires becoming a trusted advisor – a person who others can rely upon to be competent, honest, loyal and kind. Even the most brilliant IP lawyer, patent and/or trademark agent will not be able to attract and maintain clients if they are not trusted by their clients. To earn and maintain clients’ trust, an IP practitioner must be trustworthy and credible when interacting with clients, bosses, partners, associates, support staff, examiners, judges, court staff, opposing counsel and everyone else with whom the practitioner interacts.
26 Jan 2018
On February 8, in the Société québécoise de gestion collective des droits de reproduction (Copibec) v. Université Laval case(hereafter “Copibec v. Université Laval”), Québec’s Court of Appeal authorized the Société québécoise de gestion collective des droits de reproduction (“Copibec”) to undertake a class action lawsuit against Université Laval for violating copyright and moral rights. Copibec claims atotal amount of $4,081,830,subject to re-evaluation.