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23 June 2008

Mark must be in use in country of origin as of Canadian filing date

For the first time, in Allergan Inc v Lancôme Parfums and Beauté & Cie, the Trademarks Opposition Board has refused an application pursuant to Sections 37(1)(a) and 30(d) of the Trademarks Act on the grounds that the applicant had not established that the mark was in use in the applicant's country of origin at the time the Canadian application was filed.

Fross Zelnick Lehrman & Zissu, PC (WTR 1000)

The firm's lawyers litigate UDRP proceedings against cybersquatters, advise on worldwide domain name registration and disputes, monitor the Internet for infringements, negotiate linking and keyword

Ranked in United States: National, United States: New York

17 March 2016

Old economy remedy in new economy litigation

A preliminary injunction has been issued against ride-sharing service Uber Technologies requiring it to revert to technology which is arguably inconsistent with its app-driven business.

05 November 2008

Domain name parking may constitute abusive registration

In Mxit Lifestyle (Pty) Ltd v Steyn, the alternative dispute resolution body for '.za' domain names has found for the first time that domain name parking can constitute an abusive registration in certain circumstances. The decision also confirmed that the relevant date for showing such rights to a name or mark is the date of the complaint, and not the registration date of the disputed domain name.

28 March 2019

Marketing is a popular theme in conversations about applying AI 

Trademark rights are fundamentally about communication: they are the means by which consumers identify goods or services as coming from a particular source. While this principle is consistent throughout the world and has not changed over time, the means by which businesses and consumers communicate is constantly evolving.

14 November 2014

FBI agent tells mark owners to 'help us to help you' in fight against infringement

While the Federal Bureau of Investigation’s efforts against IP rights violations may not garner the same media coverage as its other enforcement activities, IP theft falls firmly under its white collar crime remit. Speaking at this week’s INTA Leadership Meeting in Phoenix, one agent expanded on why some reported violations lead to active cases and some don’t.

29 March 2012

Will Google’s algorithmic changes drown out infringers?

Over the past few months, Google has made a series of changes to its search algorithm. In this continuing move towards semantic search, brands will need to focus even more than before on reviewing their engagement with consumers. Search based on social connections and relevancy of content may also offer benefits in the fight against trademark infringement and counterfeiting.

20 April 2016

Supreme Court declares Verkkokauppa.com mark to be well known and worthy of protection

In Verkkokauppa.com v Veneilijänverkkokauppa.com the Supreme Court has quashed two lower-court decisions, ruling in favour of the owner of Finnish trademark Verkkokauppa.com. The action was based on the 2004 registered word trademark covering "retail and e-commerce" in Class 35.

21 September 2007

Google in hot water with Australian competition watchdog

The Australian Competition and Consumer Commission has commenced a landmark proceeding against Google in the Federal Court of Australia relating to sponsored links. The commission claims that this is the first action of its type in the world, in the sense that it is the first regulatory body to seek clarification of Google's conduct in relation to sponsored links in the context of trade practices law.

23 July 2013

Metatags come to the ECJ

In Belgian Electronic Sorting Technology BV v Peelaers, the ECJ has considered the interpretation of the term ‘advertising’ under Article 2 of Directive 84/450/EEC and Article 2 of Directive 2006/114/EC on misleading and comparative advertising. BEST alleged that the registration and use of the domain name ‘www.bestlasersorter.com’ and the use of certain metadata infringed its trademark and trade name, and infringed the law on misleading and comparative advertising.

01 January 2016

Own name defence: a global perspective

In many countries people or even companies have a defence to trademark infringement when using their own names. In this article Baker & McKenzie’s global IP team outlines where an own name defence exists and whether this extends to company names

04 May 2010

WTR Industry Awards shortlist highlights the best in-house counsel

Over 1,600 nominations and two months of extensive research later, the shortlist for this year's WTR Industry Awards is now live. The awards recognize the vital work of in-house trademark counsel and identify those teams and individuals that are performing their functions to the highest standards.

20 September 2005

Google and GEICO settle keying case

The US District Court for the Eastern District of Virginia's somewhat surprising step of staying proceedings mid-trial to give Google Inc and Government Employees Insurance Co a chance to settle their high profile trademark infringement 'keying' case has had the desired effect. The parties have now resolved their differences.