Tag Archives: Trade-marks

ILN Today Post

Well Known Mark: The Ordeal of International Brand

The Trade Marks Rules, 2017, has -implemented certain significant changes in the procedural aspect of declaring a trademark to be a well -known mark by way of filing a request before the Trade Marks Registry alongwith supported documents in the form of statement of case and an official fee of INR One hundred thousand ( One Lakh). The Office of Controller General of Patents, Designs and Trade Marks (CGPDTM) has also issued notifications elucidating the process of submitting the evidences showing the use of trademark, existing and potential customers for goods/services available under trademark, the duration, extent and geographical area of use of the mark, judicial pronouncements wherein trademark declared to be well known etc. There was no procedure for determining the well-known mark, though there were instances whereby trademarks were declared well -known during infringement/passing off proceedings or in opposition/rectification proceedings etc. With the advent of new rules it now obligates the Trademark Registry to provide an extraordinary protection to the well-known trademarks and safeguards them from the vices of infringement and passing off.

Continue Reading… Well Known Trademark Article 09.01.18

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USE IT OR LOSE IT- in Canada

Group of Hands Holding Letter Trademark

Under the Canadian Trade-marks Act, one can request that the Registrar of Trade-marks commence Section 45 Proceedings to cancel a trademark registration for non-use.  The Act states that the Registrar shall, upon the written request by any person (who pays the prescribed fee) after three years from the date of registration of a trademark, unless the Registrar sees good reason to the contrary, give notice to the registered owner of the trademark, requiring the registered owner to furnish within three months an affidavit or a statutory declaration, showing, with respect to each of the goods or services specified in the registration, that the trade-mark was in use in Canada at any time during the three year period immediately preceding the date of the notice.

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IP licensing and structuring considerations for Australian registered trade mark owners

iStock_000050094102_FullThe recent Federal Court of Australia decision in Skyy Spririts LLC v Lodestar Anstalt [2015] FCA 509 serves as a reminder that Australian registered trade marks are vulnerable to removal on the basis of non-use if licensing and structuring arrangements are not adequate.

Under the Australian Trade Marks Act 1995 (Cth) a trade mark may, upon application, be removed from the register if the registered owner has not used the trade mark in Australia for a continuous period of 3 years.

As part of a long running dispute between Wild Turkey Bourbon and Wild Geese Rare Irish Whisky about  their rights in Australia with respect to the trade marks “WILD TURKEY” and “WILD GEESE”, a non-use application was filed with IP Australia seeking removal of Wild Turkey Bourbon’s “WILD GEESE” trade mark registration.

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“The Donald” Trump – Avoids Trade-mark Licensor Liability in Canada

Image Credit: © Imdan | Dreamstime.com - Donald Trump, Youre Fired! Photo

I spent years at my office watching the gradual construction of the 70-story mixed-use TRUMP TOWER complex in downtown Toronto, Canada.  It is now a Toronto landmark and a place for the lawyers and bankers in the financial district to wine and dine clients.  Trump, two of his affiliated companies (Affiliates) plus the licensed developer have been sued (Singh v. Trump).  The plaintiffs were attempting to hold Donald Trump (the presidential candidate!) liable for alleged misrepresentations by the developer of the attributes of certain hotel condominium units in the Trump Tower complex.  The developer was licensed by one of Mr. Trump’s Affiliates to use Mr. Trump’s name and trade-marks for the Trump Tower complex.

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