ILN IP Insider

.SUCKS Sunrise Registration Period Now Open – Let the Griping Begin

iStock_000009235179XSmallThe 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.

While .SUCKS is a gTLD meant for gripe sites, what may cause even more justifiable griping among brandowners is that the cost for a .SUCKS domain name registration during the sunrise phase is a very hefty $2,499 (U.S.).

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Managing the transition: the impact of Canada’s amended Trade-marks Act on pending trade-mark applications

iStock_000000423466SmallThe 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.

As a preliminary comment, there is, unfortunately still no clarity about when the amendments to the Act will come into force. When the amending legislation was passed, CIPO initially indicated that the effective date could be as early as late 2014; subsequent projections were revised to mid-to-late 2015. More recent comments from CIPO suggest that mid-2016 is a more realistic timeframe.  The delay is apparently related to the magnitude of the IT changes required, particularly as connected to implementation of the Madrid  Protocol, to which Canada is becoming a party.

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ANY SHADE OF GREY: UK COURT RULING AFFIRMS TOUGH EU FREE MOVEMENT OF GOODS RULES

Elegant gray tie on a blackIP 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.

The scope of the Court’s powers to effectively ignore what would be a blatant infringement of IP in the name of the single EU market may come as a surprise to some IP owners.

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US Federal Government Focusing On Trade Secret Legislation, Enforcement & Policy

iStock_000015201637LargeIn its broadest strokes, American law recognizes four types of intellectual property—patents, trademarks, copyrights and trade secrets. Patents and trademarks have been enshrined in US federal law since the 1780s, through the Constitution, and trademarks have been protected at national level since the 1870s through legislation. But until quite recently, trade secret protection has been left to the law of individual states. This may surprise many since the US companies dependence on trade secrets exceeds dependence on patents, trademarks, and copyrights by a two to one margin, at least as measured by their IP portfolio values in a 2014 study. The US federal government, however, has stepped more directly into the trade secret picture in 2015 on the legislative, enforcement and policy front.

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AUSTRALIAN INTELLECTUAL PROPERTY LAW UPDATE

iStock_000008787544SmallThere have been numerous recent developments in intellectual property (IP) law in Australia.

Below is a summary of some key developments. As with any international jurisdiction, IP law in Australia is complex and requires the expertise of an experienced specialist to navigate it correctly.

INTELLECTUAL PROPERTY LAWS AMENDMENT ACT 2015

Following on from the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth), the Intellectual Property Laws Amendment Bill 2014 (Cth) recently passed the Australian Senate and will soon become law.

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The Upside of Federal Trademark Registration

You’ve created an amazing product or service with a super catchy brand name, and you are starting to make a profit.  Fairy tale ending, right? Not so fast there, budding entrepreneur/future mogul – you may have skipped a critical step – registering your brand with the United States Patent & Trademark Office (“USPTO”).

Why should I spend my hard earned money on a federal trademark registration, you ask? Oh I have heard it all: a) I’m just a small shop, b) it’s too expensive, c) there’s too much paperwork, d) insert additional suspect/weak excuses here.

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Canada: All the News – A Canadian IP Perspective

The Federal Court of Canada recently had occasion to consider a case involving both copyright and trademark issues with a distinctly international flavour. At issue was a Punjabi-language subscription daily newspaper called AJIT DAILY, published in India, and a free weekly newspaper published in Canada called AJIT WEEKLY. The Plaintiff’s AJIT newspaper started publication in India in 1955, and the AJIT WEEKLY publication was first published in Canada in 1993. Disputes between the parties had previously been decided by Courts in the United Kingdom and the United States.

In the case of Hamdard Trust v. Navsun Holdings et al, decided on November 26, 2014, the Federal Court decided the case by way of a summary trial, a format which was consented to by all of the parties.

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Canada: Combating Counterfeit Products Act Receives Royal Assent

On December 9, 2014 Royal Assent was given to Bill C-8, the Combating Counterfeit Products Act. The intention of Bill C-8 is to give the government and holders of trade-marks and copyrights new mechanisms for enforcement, along with substantial remedies, in order to combat counterfeit and black-market goods. Before the introduction of Bill C-8, Canada had been criticized for not having meaningful policies to combat the global problem of counterfeit trafficking which flowed across Canadian borders.

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