Trademark owners often face challenges when attempting to enforce against non-confusing third party trademark use, for example, where someone has adopted a “parody” mark, where the mark may be similar trademark, or have the same ‘look and feel’, but in a completely different consumer space such that consumer confusion is unlikely. But where such mark nevertheless creates an association with a registered mark, and is likely to depreciate the value of the goodwill attaching to…

On 3rd July 2020, the National People’s Congress (NPC) of the People’s Republic of China released a second draft of proposed amendments to the PRC Patent Law for public consultation. In response to opinions from various government authorities and experts, the second draft incorporates several important changes of note: Partial design protection The draft includes a leap in the definition of design to allow for protection of partial design (which currently only protects the design…

With less than six months until the end of the transition period (December 31, 2020), Boris Johnson’s government launched a major information campaign on July 13 known as “Check, Change and Go” to help individuals and businesses prepare for the Brexit reality. The United Kingdom’s withdrawal from the European Union will indeed have economic and practical consequences, including for holders of European trademarks and designs. Maintaining trademarks and designs During the transition period, all existing…

In its decision dated 12 December 2019, the Higher Regional Court Munich ruled that in principle, an interim injunction for patent infringement should not be ordered unless it can be satisfied that the validity of the patent-in-suit is ensured, for example where the patent is shown to have “survived” contested proceedings on validity (Higher Regional Court Munich, decision of 12 December 2019, case no. 6 U 4009/19; GRUR 2020, 385 – “Electrical Connection Terminal”). As…

Canadian jurisdictions continue to relax social distancing measures and take steps towards resuming operations while maintaining safe practices. This post provides an update on the status of the courts across Canada. We will continue to provide updates as matters progress. Please feel free to reach out to our litigation team with any questions you may have. The Federal Court On June 25, the Federal Court released a new Practice Direction Update and a Consolidated COVID-19 …

In United States Patent And Trademark Office, Et Al., v. Booking.Com B. V. (No. 19-46, Jun. 30, 2020), the Supreme Court held that the combination of a generic term with “.com”—referred to as a “generic.com term”–could be a protectable trademark. Booking.com, an enterprise that maintains a travel-reservation website by the same name, sought federal registration of marks including the term “Booking.com.” But a generic name—the name of a class of products or services—is ineligible for…

The Ninth Circuit held that, irrespective of a state’s own standards for equitable relief, a federal court exercising diversity jurisdiction is bound by federal common law requirements for granting the equitable remedy of restitution, including the mandate that such relief is unavailable unless there is no adequate remedy at law. Sonner v. Premier Nutrition Corp., __ F.3d __, No. 18-15890, 2020 WL 3263043 (9th Cir. Jun. 17, 2020). Plaintiff Kathleen Sonner represented a certified…