A recent decision of the United States Court of Appeals for the Federal Circuit (M.Z. Berger & Co, Inc., v. Swatch AG [2015] Fed. Cir.) has clarified the standards applicable to determining whether an applicant relying on an “intent-to-use” basis had the required “bona fide intention” to use the mark in commerce when the application was filed. Lanham Act § 1(b).
Legislation
Prior to amendment of the Lanham Act in 1988 to permit intent-to-use filings, U.S. law required proof of use in commerce at the time of filing the application. For such use-based applications, the applicant must show a “bona fide use of a mark in the ordinary course of trade.” Lanham Act §§ 1(a), 45. However, an intent-to-use applicant must only have “a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce” at a later date.
A recent decision of the Full Federal Court of Australia (
The IP bar in Canada has long been awaiting a decision from the Federal Court on the issue of the use of trademarks in a competitor’s metatags, and that decision has now arrived, with what to many is a surprising result. The Federal Court’s recent decision in Red Label Vacations Inc. v. 411 Travel Bags Limited 
All businesses have valuable intellectual property, not just “tech” focused businesses such as software developers or pharmaceutical companies. However advisers may need to translate for their clients what they mean in practical terms when they use the words “intellectual property”, in order for clients to appreciate its value and take steps to protect it. For example, instead of talking in terms of trade marks and copyright, a business owner might more readily recognise the value in their trading or product names, logos, manuals, systems, standard operating procedures and process instructions. Ideally this type of a conversation would be followed with a recommendation that the business conduct an “IP audit”. This will help a business to identify and prioritise assets for protection.
One of the most common provisions in franchise agreements is the “forum-selection” clause. Under these provisions, the parties agree that any lawsuit filed by either one of the parties will be brought only in a court in a specified city and state. The chosen court will almost always be in the city where the franchisor has its home office.
The Canadian anti-spam law (“CASL”) came into effect on July 1, 2014 and includes the ability to levy severe administrative monetary penalties of up to $10 million for one violation of CASL. In March, 2015, the Canadian Radio-television and Telecommunications Commission (“CRTC”) gave its first indication on issuing penalties and addressing violations of CASL by rendering two decisions dealing with CASL violations.
Are you operating a franchise system without realizing it? If you are licensing to others the right to use your trademark for a fee, the answer could be yes. Under both federal and some state laws, a business relationship may be a franchise — even if neither of the parties intended to create one.
The Trademark Clearinghouse (“TMCH”) Sunrise Period for the new gTLD .SUCKS launched March 30, 2015 and is open until May 29, 2015. During this sunrise phase, trademark holders who have registered their trademark registrations with the TMCH will be eligible to register the corresponding .SUCKS domain. The General Availability period opens June 1, 2015, at which time anyone will be able to register a .SUCKS domain.
The recent amendments to Canada’s Trade-marks Act present many interesting opportunities and challenges to brand owners and their counsel. This article focuses primarily on the impacts for Canadian trademark applications that are pending at the time the amended Act comes into force—that is, applications that have been filed with the Canadian Intellectual Property Office (CIPO) but that have not yet issued to registration.
IP owners continue to get punishment dished out to them, and not on a consensual basis. A recent decision of the UK’s Court of Appeal has reviewed the rules that dictate when parallel (or “grey”) market product can be rebranded to match the brand used by the market leader in the national market concerned.
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