Cognate's Trademark Blog

Trademark Law Update 14 September 2017

Another week another round of trademark stories for you. News includes, Myanmar updating their trademark legislation. Oman ratifies IP laws. Somebody has decided to trademark “Brexit” and Asian American rock band ( from Portland, of course!) the Slants celebrate their Supreme Court win.

 

Title:  Myanmar Update: Prepare Now for the New Trademark Law

Author:  Spruson & Ferguson (Australia)

Date: 6 September 2017

URL:  https://www.lexology.com/library/detail.aspx?g=aae15ea3-2348-4b38-a2ba-b58b7eaf20a4

Extract:A modern trademark system in Myanmar could be only months away with the draft trademark law currently under review by the Myanmar Parliament.

Myanmar has been working on its first formal trademark law (“the Law”) for many years, as part of a broader process to overhaul the country’s legal framework to facilitate and encourage businesses to invest and expand in Myanmar.

Although there have been many delays in the past, it is expected the Law will come into effect in late 2017 or at the latest by early 2018.

Once implemented, the Law will provide Myanmar with a modern trademark system which adheres to international standards and will bring clarity to the trademark application, registration, maintenance and enforcement processes in Myanmar.

The biggest change from what was proposed in earlier versions of the Law is the lack of a re-registration process from the current system to the new system, along with a strict first-to-file system. Brand owners should therefore be prepared to file all of their important trademarks on the first day the Law comes into effect.

 

Title:  Sultan of Oman issues and ratifies three important IP-related treaties and laws

Author:  World Trademark Review

Date: 6 September 2017

URL:  http://www.worldtrademarkreview.com/Daily/detail.aspx?g=f1c58323-a4d0-4583-a609-21a09276efaf

Extract:  N/A Paywall

 

 

Title:  Trademark Specialist Joins Litigation finance startup Legalist As In House Counsel

Author:  The Recorder

Date:  6 September 2017

URL:   http://www.therecorder.com/id=1202797359451/Legalist-AIBased-Lit-Funder-Hires-Its-First-Lawyer?mcode=1202617072607&curindex=0&slreturn=20170814052329

Extract:Curtis Smolar, an all-round business litigator with expertise in copyright and trademark law, joined Legalist as its general counsel late last month from Palo Alto IP boutique de la Pena & Holiday, becoming the company’s first lawyer. In addition to steering Legalist through regulatory requirements, Smolar will also be helping vet potential investments and assess their value.

 

 

Title:  Portland Band, The Slants, Celebrate Supreme Court Trademark Victory

Author: Arizona Daily Star

Date: 8 September 2017

URL:  http://tucson.com/entertainment/music/portland-band-celebrates-supreme-victory-with-ua-visit/article_af6eb9b8-94c4-11e7-b496-6758fa062003.html

Extract: Quick rewind of the facts: The Slants eight years ago tried to trademark the name but were rejected on the basis that you can’t trademark a disparaging term and particularly one that the the U.S. Patent and Trademark Office contended was racially derogatory. The government based its conclusion on a listing in UrbanDictionary.com  

But the band argued in various courts over the span of those eight years that the government’s premise was outdated. Slants founder Simon Tam argued that the word was so rarely used as a racial slur that the New Oxford American Dictionary had erased any reference to its use as a racial slur in recent editions.

 

 

Title:  BREXIT is now an EU trade mark

Author:  Lexology

Date: 7 September 2017

URL:  https://www.lexology.com/library/detail.aspx?g=6dbf8b88-d5c7-403a-97dc-13c526ef85f2

Extract:The EUIPO Board of Appeal has found that no absolute grounds of refusal hinder the registration of “BREXIT” as a trade mark in Classes 5, 32 and 34. The applicant is UK-based company, Brexit Drinks Ltd, and goods for which registration is sought include, amongst others, food supplements, energy drinks, brewery products and cigarettes.

 

 

Title:  Does China Have Too Many Trademarks?

Author: China Law Blog

Date: 11 September 2017

URL:  http://www.chinalawblog.com/2017/09/does-china-have-too-many-trademarks.html

Extract: China has seen a staggering increase in the number of trademark applications: more than 760,000 trademark applications were filed in 2006, and that number increased to 2.8 million in 2015. In the US, the second busiest trademark jurisdiction, fewer than 400,000 trademark applications were filed in 2006, and slightly more than 500,000 in 2015. (The statistics are from WIPO using class count data: an application in two classes counts as two applications, an application in three classes counts as three applications, etc.) And China continues to widen the gap; in 2016, more than 3.6 million applications were filed.

 

 

Title:  Article: Trademark Rights Based on Common Law or Federal Registration

Author:  Snell & Wilmer Law Firm

Date: 11 September 2017

URL:  http://www.jdsupra.com/legalnews/trademark-rights-based-on-common-law-or-17249/

Extract: This article analyzes trademark rights depending on: (1) whether a user is relying on common-law rights or a federal trademark registration, (2) the effective date on which a user’s rights began, and (3) the geographical scope of the use. Before considering specific examples, two foundational concepts of trademark rights are first discussed: (a) intrastate versus interstate use of a trademark, and (b) the natural zone of expansion.

 

 

Title:  Planning ahead: preparing for changes to Canadian trademark law

Author: Bereskin & Parr LLP

Date: 13 September 2017

URL:  https://www.lexology.com/library/detail.aspx?g=0932a8db-1a76-4aa6-a753-6cca300b38c9

Extract: The most recent estimate for the implementation of amendments to the Trademarks Act (also known as the ‘coming into force’ date) is early 2019. Draft regulations have been published, providing more information on how many of the new provisions will be implemented. The changes will bring opportunities for Canadian and international trademark owners, and it is not too early to plan for them. The following report:

  • reviews the existing and proposed changes to rules on filing, renewal, opposition and cancellation proceedings;
  • highlights some transition issues; and
  • offers tips for trademark strategy now and following the implementation of the amendments.

 

 

Title:Changes to Divisional Trade Mark Applications Flagged by IP Australia

Author:  National Law Review

Date: 13 September 2016

URL:  https://www.natlawreview.com/article/changes-to-divisional-trade-mark-applications-flagged-ip-australia

Extract: IP Australia has released a consultation paper (Paper) concerning proposed amendments to Australia’s system for filing divisional trade mark applications.  The Paper proposes amendments which will affect all divisional applications filed in Australia, including allowing divisional applications to be filed for International Registrations Designating Australia (IRDAs) for the first time.

 

 

Title:  EU trade mark reform round 2: changes on 1st October

Author: Marques.org

Date: 13 September 2017

URL:  https://www.marques.org/Class46/default.asp?XID=BHA4524

Extract: There are important changes affecting EU trade marks coming into force on 1st October. Members of the MARQUES European Trade Mark Law & Practice Team have been monitoring these changes and providing input on them. Chair Robert Guthrie and Vice-Chair Petra Goldenbaum provide a guide for Class 46 readers:

The EU Trade Mark Regulation was amended in March 2016, but a number of those amendments will only start to apply on 1st October 2017. On this date, a codified version of the EU Trade Mark Regulation will come into force, as well as two pieces of secondary legislation – an Implementing Regulation and a Delegated Regulation – which supplement the provisions of the EU Trade Mark Regulation and replace the existing Implementing Regulation.

The MARQUES European Trade Mark Law & Practice Team reviewed the EU Commission’s initial drafts of the Implementing Regulation and the Delegated Regulation and provided comments on the same. Copies of MARQUES’ comments are available on the EU Trade Mark Reform Task Force page of the MARQUES website.

 

Title:  Fenwick & West (Mountain View) CA Looking For Trademark Paralegal

Author: Craigslist

Date: 13 September 2017

URL:  https://sfbay.craigslist.org/pen/lgl/d/trademark-paralegal/6303875230.html

Extract: Our Trademark group, preeminent internationally in strategic trademark counseling and protection, is looking for an experienced paralegal to join its collegial and supportive team. You will be comfortable managing your own docket, be able to work independently, and have well-rounded experience, including domestic and foreign filings, online investigations, SAEGIS scans and D&B reports. You will be very organized and detail oriented and able to thrive in a fast-paced environment.

 

 

Title:  L’Oréal revealed as EUIPO’s top trademark filer as office experiences Brexit-related volatility

Author: World Trademark Review

Date: 7 September 2017

URL:  http://www.worldtrademarkreview.com/Blog/detail.aspx?g=0370333a-db56-4bd7-82eb-cba3378e6c98

Extract:  N/A Paywall

 

 

 

Title:  Pot Valet Discusses the Threat of Trademarked Cannabis Strains

Author:  Markets Insider

Date: 31 August 2017

URL:  http://markets.businessinsider.com/news/stocks/Pot-Valet-Discusses-the-Threat-of-Trademarked-Cannabis-Strains-1002298109

Extract: Companies are creating their own marijuana strains and protecting them with trademark laws. Profits are taking priority over the rights of patients to access genetically pure medication. A trademark is a visual cue, such as a symbol, phrase, or word that businesses use to identify and distinguish their products from those of their competitors. While this may be a branding advantage, it has consequences.

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