New Guidance on the Subject of Comparative Advertising and Dilution of Goodwill

In 2023, the Federal Court of Canada released its decision in Energizer Brands, LLC and Energizer Canada Inc. v. Gillette Company (2023 FC 804). The decision clarifies some of the laws applicable to comparative advertising in this country and should guide the conduct of parties that engage in this form of commercial activity.

Energizer sued Duracell over a sticker advertising campaign that claimed that Duracell’s batteries lasted longer than their Energizer equivalents. The Duracell advertisements referred to Energizer both directly and indirectly with phrases such as “the bunny brand” or “the next leading competitive brand”.

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Should Disclaimers Always Be Made in U.S. Trademark Applications?

Suppose you have a pending U.S. trademark application for your trademark on goods or services for your business and a term or wording in the trademark is descriptive of your goods or services. During the examination of your trademark application, the examining attorney refuses registration because the term is merely descriptive of your goods or services and requires a disclaimer. Should you always agree to the disclaimer because your trademark application will be passed onto publication? The answer is NO! and you should argue against the requirement for a disclaimer particularly if the descriptive term is a unitary or incongruous term or a double entendre.

First, how do you determine whether a term in your trademark is merely descriptive? “A term is merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing In re Gyulay, 820 F.2d 1216, 3, U.S.P.Q.2d 1009, 1009 (Fed. Cir. 1987)). The terms in a trademark are merely descriptive in relation to the goods and/or services, and not in the abstract. Id. (citing In re Abcor Dev. Corp., 588 F.2d 811, 813-14, 200 U.S.P.Q. 215, 218-219 (C.C.P.A. 1978); In re MBNA Am. Bank N.A., 340 F.3d 1328, 67 U.S.P.Q.2d 1778, 1783 (Fed. Cir. 2003)).

Second, are descriptive terms subject to a disclaimer in a trademark application? According to 15 U.S.C. § 1052(e)(1), merely descriptive terms are unregistrable, and subject to disclaimer if the mark is otherwise registrable. Can an examining attorney require you to comply with a disclaimer requirement and add a disclaimer to the trademark application? Yes, an applicant can be required to disclaim an unregistrable component of a trademark otherwise registrable. Trademark Act Section 6(a), 15 U.S.C. § 1056(a). What happens if you don’t comply with the disclaimer requirement and add the disclaimer to the trademark application? Your trademark may be refused registration because you did not comply with a disclaimer requirement. See In re Omaha Nat’l Corp., 819 F.2d 1117, 2 U.S.P.Q.2d 1859, 1860 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 U.S.P.Q. 46, 47 (C.C.P.A. 1975).

Is there an exception to the disclaimer requirement? Yes, there is an exception to a disclaimer requirement based on the descriptive term being so merged with other elements of a composite mark, that they form a unitary, non-descriptive whole that renders a disclaimer unnecessary. In re EBS Data Processing, Inc., 212 U.S.P.Q. 964, 966 (T.T.A.B. 1981). What is a unitary, non-descriptive whole? “[A] unitary [phrase] simply has no ‘unregistrable component,’ but is instead an inseparable whole.” Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 21 U.S.P.Q.2d 1047, 1051 (Fed. Cir. 1991).

Under the USPTO Trademark Manual of Examining Procedure (T.M.E.P.) § 1213.05, a trademark or portion of a trademark is considered “unitary” when it creates a commercial impression separate and apart from any unregistrable component. The examining attorney must consider several factors in determining whether the term is part of a single or unitary trademark: whether lines or other design features physically connect it; the relative location of the respective elements; and the meaning of the terminology as used on or in connection with the goods or services. Dena Corp., 950 F.2d at 1561, 21 U.S.P.Q.2d at 1052.

Can the applicant argue against the disclaimer requirement in a pending trademark application with the USPTO?  Yes, the applicant can always argue against the disclaimer requirement. To establish that a disclaimer is required, the examining attorney has to present evidence that the term is merely descriptive of the goods or services. The applicant should argue that the term is unitary, congruous, or a double entendre. The examining attorney is analyzing only the term to be disclaimed, never considering the trademark in full. The applicant should argue that by doing so, the examining attorney demonstrates why it is improper for unitary marks to be broken up into separate components to analyze whether a disclaimer is required. T.M.E.P. § 1213.05. The applicant may argue that based on the limited evidence of record, the USPTO has not met the difficult burden of establishing that the term is merely descriptive for the goods or services. See In re Merrill Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d 1567, 4 U.S.P.Q.2d 1141, 1143 (Fed. Cir. 1987). Descriptiveness is a fact-intensive determination, and any doubts are to be resolved in the applicant’s favor. Id.

However, can the argument against the disclaimer requirement be successful with the USPTO?  In a recent case before the Trademark Trial and Appeal Board (“TTAB”), In re Ol Happ’s Place Restaurant, LLC, Serial No. 90738221, (Decided January 26, 2024) (Non-Precedent), the TTAB found that the wording “BARN AND GRILL” is unitary and a double entendre such that the requirement for a disclaimer of “grill” in BARN AND GRILL is unnecessary. In Ol Happ’s Place Restaurant, Ol Happ’s Place Restaurant, LLC, the applicant of the trademark application, sought registration on the Principal Register of a word and design mark

for “restaurant services; bar services”. The examining attorney refused registration based on the applicant’s failure to comply with a disclaimer requirement. The applicant refused to add a disclaimer of “GRILL” in the trademark application and appealed the final refusal. On appeal, the USPTO reasoned that the term “BARN AND GRILL” brings to mind a restaurant with a barn and a grill and also brings to mind the common term “bar and grill”. As such, the USPTO issued a decision finding that the disclaimer of “grill” was unnecessary, reversing the disclaimer requirement.

In summary, during the examination of a U.S. trademark application, an examining attorney may require an applicant to disclaim an unregistrable term of a trademark otherwise registrable if the term is merely descriptive of the goods or services. As a practice tip, the applicant should always argue against the disclaimer requirement because either the examining attorney has not established by sufficient evidence that the term is merely descriptive of the goods or services and/or that the term is unitary, incongruous, or a double entendre. In the alternative, if the applicant wants to comply with the disclaimer requirement, the applicant should state that it disagrees with the disclaimer requirement and that the disclaimer is being made under protest to the further prosecution of the application.

Comma, Comma, Comma, Comma, Comma Chameleon: How Punctuation Can Color IP & Other Legal Rights

“[T]he comma…this capricious bit of punctuation…”

United States v. Ron Pair Enterprises, Inc., 489 US 235, 249
(1989) (O’Connor, J, dissenting)

For want of a comma, we have this case.”

O’Connor  et al. v. Oakhurst Dairy et al.,
851 F.3d 69, 70 (1st Cir. 2017)

“But, when pressed, I do find I have strong views about commas.”

Holy Writ by Mary Norris
THE NEW YORKER, February 16, 2015

As long ago as 1818, in  United States v. Palmer, 16 U.S. 281, 293 (1818)(separate opinion of Johnson, J.), a Justice of the United States Supreme Court noted that “the use of the comma is exceedingly arbitrary and indefinite,” and a federal circuit court in 1988 noted that the comma is “often a matter of personal style,” and therefore “is a very small hook on which to hang a change in the law of substantial proportions.” In re Newbury Café, Inc, 841 F.2d 20, 22 (1st Cir. 1988). Indeed, at varying times the Supreme Court has noted some undervaluing of the legal import of punctuation. See, e.g.,  Barrett v. Van Pelt, 268 U. S. 85, 91 (1925) (“`Punctuation is a minor, and not a controlling, element in interpretation, and courts will disregard the punctuation of a statute, or re-punctuate it, if need be, to give effect to what otherwise appears to be its purpose and true meaning’ “); Ewing v. Burnet, 11 Pet. 41, 53-54 (1837) (“Punctuation is a most fallible standard by which to interpret a writing; it may be resorted to when all other means fail; but the court will first take the instrument by its four corners, in order to ascertain its true meaning: if that is apparent on judicially inspecting the whole, the punctuation will not be suffered to change it”). Following such precedents, the Supreme Court has not hesitated in the past to change or ignore the punctuation in legislation to effectuate congressional intent. See, e.g., Simpson v. United States, 435 U. S. 6, 11-12, n. 6 (1978) (ignoring punctuation and conjunction so that qualifying phrase would modify antecedent followed by comma and the word “or”); Stephens v. Cherokee Nation, 174 U. S. 445, 479-480 (1899) (ignoring punctuation so that qualifying phrase would restrict antecedent set off by commas and followed by the word “and”). As Justice Scalia and co-author Brian Garner noted in Reading Law: Interpreting Legal Texts (2012), at 139, “[n]o helpful aid to interpretation has historically received such dismissive treatment from the courts as punctuation—periods, semicolons, commas, parentheses, apostrophes.”

Despite, or maybe because of, that history, the comma recently took center stage in the United States Patent Trial and Appeal Board’s February 22, 2024 decision in Netflix Inc. v. DivX LLC, case number IPR2020-00558, a case on remand from the United States Court of Appeals for the Federal Circuit. That decision illustrated both the importance and unimportance of punctuation in understanding intellectual property rights, and provides a useful take-off point for reminding ourselves of where such matters sit in the IP world these days, and whether there are “must-know comma rules for lawyers.” 

Netflix/DivX is a patent case concerning the patentability vel non of 24 claims in U.S. Patent No. 10,225,588 B2 concerning devices and methods for playing back alternative streams of content protected through a common set of cryptographic keys. Central to the dispute were the contending interpretations of the Patent Owner and the challenging Petitioner concerning claims limitation “[I] locating encryption information that identifies encrypted portions of frames of video within the requested portions of the selected stream of protected video,” quoted at Netflix/DivX decision at 11 as it appears in patent—in other words, without commas. The Board then summarized the parties’ contentions as:

Patent Owner argues that the clause “within the requested portions of the selected stream of protected video” in limitation [l] of claim 1 modifies “locating encryption information,” and, properly construed, dictates that the “encryption information” must be “located,” “within the requested portions of the selected stream of protected video.” PO Resp. 26–39 (citing Ex. 2012 ¶ 85); PO Sur-reply 1–8. Petitioner asks us to reject Patent Owner’s arguments, and adopt our preliminary determination at the institution stage that the “within” term of limitation [l] connotes where the particular encrypted portions of frames of video must be located, not necessarily where the encryption information must be located. Pet. Reply 20–23.

[Netflix/DivX decision at 12]

The Board “determine[d] Patent Owner’s reading of the claim limitation is the better one,” holding it “reasonable that the second and third clauses of the limitation both modify the first clause (for example, as could perhaps be expressed through the use of commas as ‘locating encryption information, that identifies encrypted portions of frames of video, within the requested portions of the selected stream of protected video’),” the Board having “included commas above to illustrate Patent Owner’s understanding of the claim interpretation.” Netflix/DivX decision at 13, and fn. 10.  [I have made the Board-inserted commas bolded and enlarged the font for emphasis]. The Board held that Petitioner’s reading, “while not unreasonable, makes less sense” but nowhere presented a repunctuated version of the limitation illustrating Petitioner’s interpretation. Id. at 13-14.

And a dissenting Board member called the majority on that difference, noting that “[t]he majority opinion acknowledges that limitation [l] of independent claim 1 contains no commas, such that their placement would have been helpful to understand Patent Owner’s intent in creating and amending such a limitation” and that neither the punctuation nor the claim language in question came from the inventor. Netflix/DivX decision at 39 (page 3 of dissent). The language came through Examiner’s Amendment and the punctuation by the Board. The challenger has already appealed, and we are left wondering whether punctuation is important (as it seemed necessary for the majority to add it to explain the patent limitation’s meaning) or unimportant (the majority imposed no requirement on inventor or applicant to have provided such punctuation to illustrate that meaning in the first place). 

That US decision, and analytic approach, stands in contrast to a September 30, 2022 decision of the Board of Appeal of the European Patent Office in Matter T 1473/19 30-09-2022 between Schleifring GmbH and Siemens Healthcare GmbH concerning a patent for a contactless rotary joint. In that matter, “the contested expression, which does not contain any commas,” involved language stating that “said body having a free inner bore holding a capacitive data link.” EPO Decision at 2 (Summary item VI), 11 (paragraph 2.4). Rather than supplying commas in aid of expressing a favored interpretation, the EPO Board Appeal determined who a person skilled in the art, “on a plain reading of this expression,” would construe the operative language “[i]n the absence of any comma and any coordinating conjunction separating the various terms.” EPO Decision at 22 (para. 4.2). In other words, the lack of comma was held against the inventor/applicant’s interpretation rather than supplied in further support thereof.  EPO Decision at 28-31 (para. 5.1-7, and Order). Indeed, the EPO Board concluded that it could not allow the patent at issue to be “corrected” by supplying an “additional comma and noun group ‘said body’” without violating prohibitions on added subject matter. EPO Decision, at 25 (para. 5.1)  

Unlike the permissive Netflix/DivX decision from its US counterpart, the EPO Board’s decision illustrates that, although “punctuation saves lives!” at times, it can also kill patents.

There are any number of US patent decisions that similarly sway back and forth on the issues of whether a court can, or should, supply a needed comma or other punctuation in patent or other contexts. See, e.g., Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F. 3d 1339, 1352-53 (Fed. Cir. 2009)(not indefinite because one skilled in the art would realize need to read omitted comma into formula); Credle v. Bond, 25 F. 3d 1566, 1572 (Fed. Cir. 1994) (because in one portion of patent “there is a comma, indicating the beginning of a new, distinct step to be taken in the method of producing the collapsible bags,” but “there is no such comma preceding ‘flexibly securing.’ This suggests that ‘securing’ is not a present participle signifying a distinct method step, but instead indicates the static relationship between the spout and the form,” and thus “Credle’s proposed construction of the count is at war with its grammar and syntax and thus would force an unreasonable interpretation.”), and Allen Eng’g Corp. v. Bartell Indus., 299 F.3d 1336 (Fed. Cir. 2002) (lack of punctuation in limitation mean claim failed to meet definiteness requirement). And other court panels, such the Federal Circuit in Quality Edge, Inc. v. Rollex Corp., simply concede that, for example, there are “no hard and fast grammatical rule[s]” on the import of placing–or not placing–a comma between two adjectives, and thus courts need to consider other aids of interpretation.    

This is, admittedly, somewhat indeterminate, at least as far a patent law goes, and the US Manual of Patent Examining Procedure (MPEP) has relatively little of substance to say about punctuation.  If one considers “indentation” a replacement or supplement for punctuation, one should recall that the MPEP, at 608.01(m) references the substantive impact of indentations, noting that “there may be plural indentations to further segregate sub-combinations or related steps.” Similarly, the Code of Federal Regulations,  37 C.F.R. § 1.75(i), notes that “[w]here a claim sets forth a plurality of elements . . ., each element . . . of the claim should be separated by a line indentation.” One court in 2021, in a Western District of Texas case named Shotkam LLC v. Tachyon, Inc., even combined references to these items, indentations, and “the use of a semicolon” to determine that a patent claim had three, rather than two, required elements. The Patent Trial and Appeal Board, however, continued to illustrate a more indulgent approach than its European Union Counterpart, with its March 14, 2024 decision in Metacluster LT Uab v. Bright Data Ltd, PGR2022-00061Metacluster involved a motion by the Patent Owner to “cancel claims 1–34, and substitute claims 35–66,” and to provide “written description support for several claim limitations sought to be added.” The US board not only granted to the motion but did so after providing “Preliminary Guidance” in the form of “information indicating [the Board’s] initial, preliminary, and non-binding views on whether Patent Owner had shown that it has satisfied the statutory and regulatory requirements associated with filing a motion to amend in a post-grant review and whether Petitioner (or the record) established that the substitute claims are unpatentable.” Opinion at 2-3. The Board then went on to grant the motion to amend, even though the substituted claims including “determining limitations” and “removing limitations” that were “not included” in the original application. Though these were not originally included, the US Board did not find them to represent “new matter.” Opinion at 4-5, and 9-18. Though Metacluster did not involve the adding of punctuation alone, it certainly illustrates an approach to drafting, iterative submissions, and Board guidance that differs markedly from the European Patent Office’s approach in Matter T 1473/19 30-09-2022 between Schleifring GmbH and Siemens Healthcare GmbH.

So this begs the question of whether the US approach includes specific directions and rules on meaning, language and punctuation or not. I guess you could say, or sing, that “I am a man without conviction” as to whether such determinacy exists, and “I’m a man who doesn’t know/How to sell a contradiction” like adding something that was not previously is different from adding new matter. [I guess advice is just to say that one can “come and go, you come and go.”]. With patent not offering the determinacy sought, perhaps one can find more structured and determinate punctuation rules in other intellectual property areas, such a trademark. That may be worth a look.

In contrast to the MPEP, Trademark Manual of Examining Procedure, or TMEP, deals repeatedly and substantively with the impact of punctuation on trademark rights, as well as one the items submitted to the trademark office as proof of a trademark’s content/elements or proof of its use. For example, in section 1213.05(b)(ii)(C), the TMEP notes that the “use of punctuation, such as a question mark, exclamation point, colon, dash, or period, as well as the meaning of the punctuation itself, may be a factor weighing either in favor of or against a mark or a portion of a mark” as it is considered in the application process.  Likewise, under section 807.12(a)(i), “[p]unctuation in the mark on the drawing must also appear on the specimen because a mark sought to be registered under §1 must be “used in commerce,” and if the punctuation on the drawing does not appear on the specimen, the mark on the drawing is not used in commerce.” Other provisions, such section 1209.03, deal with the impact of punctuation on descriptiveness analysis. Further, punctuation is an important aspect of expressing, listing and defining the goods and services to which trademarks will apply, as seen in sections 1402.01(a) and 1902.02(f). The EU Intellectual Property Office Guidelines, at section 4.2.5, also deal expressly with punctuation in this context, noting that the “use of correct punctuation is very important in a list of goods and services — almost as important as the words.”

With that sort of background and grounding, one might hope that trademark cases concerning punctuation come out more definitively than those involving patents. But Adventis, Inc. v. Consol. Prop. Holdings, Inc., 2006 WL 1134129 (W.D. Va. Apr. 24, 2006), suggests otherwise. In that case, one of the issues presented involved the addition of an exclamation point (!) to a previously-adopted word mark. Though the Adventis Court noted that “the exclamation point would have been protected under the registration” defendant had obtained “[i]f the defendants had registered the word ‘Big Lots’ with an exclamation point,” it also noted that a “word mark registration, however, does not invariably permit the holder to unabashedly add letters, words, symbols, or graphics to a word mark and receive protection for these additions.” But the Adventis Court continued, asking the question as to whether such a change would nonetheless have left the two mark “convey[ing] the same continuing commercial impression,” allowing a tacking of period of uses. On that question, the Adventis Court also had its perspectives “come and go,” noting first that the “court would agree with the defendants that the addition of an exclamation point when used as a punctuation mark would generally not alter the commercial impression of a mark whose major feature is the words themselves,” but then that, “[i]f, however, the exclamation point is more than a mere punctuation mark and is intended to be a new design feature, then the addition of the exclamation point could impart a differing commercial impression.” After some further observations such as “the exclamation point used in the 987 mark is placed between the words ‘Big’ and ‘Lots,’” the “court knows of no instance when it is grammatically correct to place an exclamation point in the middle of a sentence or between two words that denote a single proper noun,” and the “exclamation point is independently featured on advertising and in-store signs,” the Adventis Court found questions of fact precluded summary judgment. Consequently, as in the patent field, the impact of punctuation is somewhat more of a ? than a definitive !, if you get the point. 

But there should be answer, as commas can cost companies millions, or so the story goes. And knowing the rules should let you save your IP, according some watchdogs.  Right?

But, alas, that isn’t how it has worked in legal matters. In fact, commas can confuse even more than IP rights.  Punctuation and grammar have spawned or contributed to sports rivalries and implicated multi-million dollar swings, as seen in the NBA/ABA merger battles around an indemnity agreement that read “The Nets shall have the right, without further approval of Center, to play their home games at any location within the Net’s home territory in New York, other than in the Counties of New York, Bronx, Queens, Kings or Westchester or at any location in New Jersey, or any location in New Jersey” and whether that last phrase (“or any location in New Jersey”) referenced where the New York Nets could, or could not, move without further approval of the Knicks and Madison Square Garden, i.e. the Center. See Besser, Is There A Grammarian In The House, in Besser, Old Lawyers Never Die, They Just Lose Their Appeal (1996), at 35-37; see also Sam Goldaper, Order Restraining Knicks In Nets’ Move Continued,NY Times, July 14, 1977, at 23. Commas have also contributed to the constitutional conundrum around the 2d Amendment, because history leaves unclear how many commas are in the amendment:

Essentially, the older written versions [of the Second Amendment] I’ve seen in books – like Joseph Story’s – have one [comma] while more recent ones use three. I’m told the version on public display in Washington, DC has three, but that that is an anomaly to others of the period and to those sent around for ratification. I have seen one of them, and it contained one comma. Anyway, my question was, do the number of commas make a difference in the Second’s meaning?

***

Strict constructionists… might do better to interpret the 2nd Amendment based not on what they learned about commas in college but on what the framers actually thought about commas in the 18th century.

The most popular grammars in the framers’ day were written by Robert Lowth (1762) and Lindley Murray (1795). Though both are concerned with correcting writing mistakes, neither dwells much on punctuation. Lowth calls punctuation “imperfect,” with few precise rules and many exceptions. Murray adds that commas signal a pause for breath. Here’s an example of such a pause, from the Constitution: “The judicial power of the United States, shall be vested in one Supreme Court” (Article III, Section 1). But times change. If a student put that comma in a paper today, it would be marked wrong.

[Van Alstyne, A Constitutional Conundrum of Second Amendment Commas, 10 GREEN BAG 2D 469, 470-72 (2007); see also, generally, 469-477]

This means that punctuation, especially commas, have a long history of confounding us and that that will probably continue.

In the end, what was true in 1990 when Richard Wydick asked “Should Lawyers Punctuate?” is true now: “One can find recent case law in the United States to support almost any view of punctuation,” and it isn’t much different elsewhere. And, as Wydick further noted, it remains true that “commas (or the lack of them) cause more trouble than all the other punctuations marks put together.” Getting the meaning (as reflected in the grammar and punctuation) right and set consistently “every day is like survival” for the rule of law:

The rule of law is commonly identified with respect for a set of fundamental values deemed essential for maintaining a just and stable society. These values include:…[4]  Predictability: The rule of law requires that the legal system be predictable, so that individuals can plan their lives and businesses accordingly. This means that laws and legal decisions must be consistent and predictable, and that individuals can rely on the law to make decisions and resolve disputes.

[What are the most commonly identified rule of law values?, inTwenty questions (and answers) on the rule of law…, at Jurist: Legal News and Commentary—Reporting The Rule of Law In Crisis]

That means, as we slog through punctuation problems and grammatical quagmires as IP lawyers, we’re left hoping for  better “[comma] karma, [comma] karma, karma …” because clarity and consistency are not fostered if meaning simply changes back and forth, chameleon-like, depending on the surroundings that punctuate any particular legal or factual setting. 

Usage of ad words by a competitor does not amount to trademark infringement

Google AdWords have long been used by businesses to ensure that their business listings feature on top of the Google search results when the users search for particular terms (which have been bought by a business from Google). While this process may sound perfectly fine when the ad words pertain to one’s trademarks or generic words, what happens when an entity starts purchasing the ad words for a competitor’s trademarks? Does it amount to trademark infringement or is it permissible since there is no actual use of the trademark (by an entity that is purchasing the competitor’s ad word)?

The aforementioned questions came up for consideration before the Indian judiciary when MakeMyTrip (in 2023) filed a case before the Delhi High Court against Google and Booking.com alleging that Booking.com had used MakeMyTrip (and other trademarks of the company) as keywords on Google Ads to promote its own services through advertisements on Google search results.

The Single Judge of the Delhi High Court granted an interim injunction in favour of MakeMyTrip, thereby temporarily restraining Booking.com and Google from using the name MakeMyTrip (and associated trademarks) as keywords on Google Ads in India. The prima facie view of the Single Judge was that this use would amount to trademark infringement and be detrimental to MakeMyTrip’s ‘monetary interest and brand equity’.

The ad interim order was thereafter appealed before the Division Bench of the Delhi High Court. The Court reversed the order and held that use of the marks as keywords would not amount to use as trademarks, and therefore the use of such marks as keywords does not constitute infringement under Section 29(1) of the Trade Marks Act. The judge stated that there is “nothing illegal in Google using the trademarks as keywords for display of advertisements if it did not result in any confusion or mislead internet users to believe that sponsored links or Ads displayed were associated with the proprietors of the trademarks”. The Court further observed that since Booking.com is a well-known platform offering travel services, it was ‘unable to accept’ that an internet user would be misled into believing that services offered by Booking.com are those of MakeMyTrip.

The court disagreed with the application of Section 29(7) of the Trade Marks Act which is applicable when a person applies a registered trade mark to a material intended to be used for labelling or packaging of goods, as a business paper, or for advertising goods or services. The Court observed that “in the present case, the use of trade marks as keywords cannot, by any stretch, be construed as applying the registered trade mark to any material intended to be used for labelling or packing goods, as a business paper, or for advertising goods or services.”

The order of the Division Bench was further appealed before the Supreme Court of India which dismissed the appeal without reversing the order of the Division Bench. The case is being heard on merits by the Single Judge of the Delhi High Court. It’ll be interesting to see whether the Court observes that there is trademark infringement by purchasing a competitor’s trademark as a Google Adword or whether it opens up a whole new marketing opportunity for competitors to purchase Adwords of competitors’ businesses (and exploit them for promoting their own business).

Australian Intellectual Property Reforms Ahead

2024 appears to be a year of change in the Australian Intellectual Property realm, with the adoption by IP Australia of the Madrid Goods and Services List and the introduction of the Intellectual Property Laws Amendment (Regulator Performance) Act 2023.

Adoption of the Madrid Goods and Services List

In January 2024 IP Australia announced that it would replace the current Trade Marks Goods and Services List with the Madrid Goods and Services List (MGS list) in March 2024. This change will align IP Australia’s classification of goods and services for trade mark applications with international best practices, and the standards used by the World Intellectual Property Organization (WIPO).

The real difference between the two Lists is that in Australia under the Trade Marks Goods and Services List, a trade mark applicant can register a trade mark with a broader meaning, for example registering a trade mark under the current ‘Wholesale Services’ category. However, under the MGS list, the registration will need to be more specific, with registrations under the Wholesale Services list to be instead “Wholesale services in relation to [list of goods]”. This means that it will be more important for owners of Australian trade marks to ensure that their trade mark applications are drafted correctly to ensure that the trade mark covers all of the goods and services they use, or intend to use.

Importantly, the changes in classification will likely make it easier for Australian exporters to protect their trade marks in other countries because the way the goods will be described will be consistent with those accepted by the Madrid Goods and Services List.

The Intellectual Property Laws Amendment (Regulator Performance) Act 2023

In late 2023, the Intellectual Property Laws Amendment (Regulator Performance) Act 2023 (the Act) received Royal Assent, marking a significant milestone in the evolution of Australia’s intellectual property landscape. This comprehensive legislative reform, with amendments commencing at various intervals, focuses on refining and enhancing processes related to trade marks, patents, and the protection of Olympic insignia. The Act aims to streamline administrative procedures, fortify legal frameworks, and ensure robust intellectual property protection.

Amending the Olympic Insignia Protection Act, Trade Marks Act and Patents Act

The Act introduces amendments to three crucial pieces of legislation; the Olympic Insignia Protection Act 1987, Trade Marks Act 1995, and Patents Act 1990. These amendments are organised into six distinct parts, each addressing specific aspects of intellectual property law.

Part 1 – Trade marks that contain, or consist of, Olympic motto, etc.

Part 1 of the Act clarifies that only the Australian Olympic Committee (AOC) and the International Olympic Committee (IOC) are authorised to register Olympic insignia as trade marks in Australia.

The amendments reinforce the government’s authority to reject trade mark applications not filed by the AOC or IOC, enhancing the protection of the Olympic brand.

Part 2 – Renewal of registration 

Part 2 of the Act addresses minor inconsistencies in trade mark renewal grace period conditions. By aligning these conditions, the legislation ensures a more consistent and streamlined process for the renewal of trade mark registrations.

Part 3 – Revocation of registration

Part 3 of the Act introduces a requirement for the revocation of a trade mark registration if IP Australia overlooks a component of a notice of opposition by a third party during the registration process. This amendment bolsters the integrity of the registration process and addresses potential oversights in the opposition procedure.

Part 4 – Restoration of trade marks to the Register

Part 4 of the Act allows, under specific circumstances, the restoration of a trade mark registration onto the Trade Marks Register after it is removed due to non-use. This provision provides flexibility in cases where a trade mark’s removal was unjustified, ensuring fair treatment for intellectual property owners.

Part 5 – Official Journal, etc.

This section removes direct references to the Official Journal of Trade Marks, allowing the government to adapt the format used to communicate trade mark decisions to changing technologies and customer behaviour. This amendment reflects a commitment to staying agile and responsive in the digital age.

Part 6 – Spent Provisions

Part 6 repeals transitional and saving provisions in the Patents Act 1990 (Cth) that expired in February 2022. This procedural change has no impact on the administration of Australia’s patent system but serves to streamline the legislative framework.

Corresponding changes to regulations 

The Act anticipates corresponding changes to the Trade Mark Regulations and Patents Regulations, with the Intellectual Property Laws Amendment (Regulator Performance) Regulations expected to be in place by 17 May 2024 to support and complement the changes made by the Act. These regulatory adjustments aim to provide a harmonious and integrated legal framework for the effective implementation of the legislative reforms.

Conclusion

The Intellectual Property Laws Amendment (Regulator Performance) Act 2023 represents a forward-looking approach to intellectual property regulation in Australia. By addressing specific challenges in trade mark and patent administration and refining the protection of Olympic insignia, the Act contributes to a more robust and responsive intellectual property regime. As the corresponding regulations are set to fall into place, stakeholders in the intellectual property space can anticipate a more streamlined and efficient landscape for the protection and administration of intellectual assets.

UK appeal court: beware of the “side-by-side” trade mark comparison

Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc & Anor [2024] EWCA Civ 29 (26 January 2024)

When assessing the likelihood of confusion between two marks in a trade mark clearance or infringement context, the orthodox approach of the diligent IP practitioner might be to set the two marks out next to one another, analysing them primarily from the perspective of the average consumer at the point of sale. Whilst the prospect of confusion arising after this point should be considered, it is unlikely to be the focus. A recent UK court of Appeal decision has, however, underlined that this technical, square-on comparison does not in fact reflect the real worlds that brands inhabit, and the various ways in which the average consumer can be confused by them even after a product has been sold.

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THE COLOMBIAN COPYRIGHT AGENCY ANALYSES AI-CREATED WORKS AND PROVIDES AN INITIAL APPROACH TO THE PROTECTION UNDER COPYRIGHT LAWS

The protection of works created from the human intellect, under the legislations that have adopted a droit d’auter system, is centered on the relationship existing between the individual who created the work, and the piece that constitutes the protected work.

Therefore, the legal regulations which govern the prerogatives that the creator has concerning the protected work are supported on the premise that the creator is a human being, who has expressed and portrayed, in a tangible fashion, his or her idea or mental creation.

Under legal systems that have been developed from the droit d’auter tradition, it is an essential requirement that the originator of the protected work be a human individual, and the protection is directly derived from the fact that this individual, the author, has an intimate connection with his or her creation, which gives rise to the existence of the so-called moral rights, which are not renounceable,  and non-assignable, and are considered to be a constitutional right. (more…)

Can U.S. Trademark Registrations Be Strengthened Against Invalidation?

Suppose that you have obtained a U.S. trademark registration for your trademark on goods or services for your business. Can your trademark registration be cancelled with the U.S. Patent and Trademark Office based on it being invalid? Can you file anything to strengthen your trademark registration against invalidation? The answer is YES! if the trademark has been in continuous use for five consecutive years subsequent to the date of registration.

A trademark registration that was obtained on the Principal Register “… shall be prima facie evidence of the validity of the registered mark and of the registration of the mark … but shall not preclude another person from proving any legal or equitable defense or defect …” See 15 U.S.C. § 1115(a) (Emphasis Added). This means that it is less burdensome to prove the invalidity of a trademark registration. For example, under U.S. trademark law, a petition for cancellation may be filed at any time to challenge the trademark registration as being invalid. For trademark registrations within five years, the grounds for cancellation of a trademark registration include the likelihood of confusion, abandonment, dilution, deceptiveness, and whether the mark is merely descriptive or has become generic or functional. See 15 U.S.C. §1064.

Is there anything that the trademark owner can do to make it more difficult for a trademark registration to be invalidated? Yes, the owner of a trademark registration on the Principal Register may file for “incontestable” status if the trademark has been in continuous use for five consecutive years subsequent to the date of registration.

Under 15 U.S.C. § 1115(b),

“[t]o the extent that the right to use the registered mark has become incontestable under section 1065 of this title, the registration shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce.” (Emphasis Added).

For example, under U.S. trademark law, for trademark registrations older than five years, a petition for cancellation may be filed based on the grounds enumerated in Trademark Act § 14, 15 U.S.C. §1064, which provides for cancellation of a trademark registration as being invalid any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, or is functional, or has been abandoned for non-use, or its registration was obtained fraudulently. This means that it is more burdensome to provide invalidity of a trademark registration that is incontestable than for one that is not. Therefore, an owner of a trademark registration on the Principal Register should file a Section 15 Declaration of Incontestability if the trademark has been in continuous use for five consecutive years subsequent to the date of registration.

For a Section 15 Declaration, the owner must not only declare that the mark has been in continuous use for five consecutive years after the date of registration but also declare that there is no final decision adverse to the owner’s claim of ownership of the mark or to register the same or keep the same on the register and no proceeding involving the trademark rights pending and not finally disposed of either in the United States Patent and Trademark Office (“USPTO”) or in a court. What if there is a proceeding involving the trademark rights that is pending with either the USPTO or the court?

Preferably, the Section 15 declaration should be filed at the same time the Section 8 Declaration of Use is filed. If the Section 8 declaration has already been filed and, if there is no proceeding that is pending with either the USPTO or the court, the Section 15 declaration should be filed immediately. However, if there is a proceeding that is pending with either the USPTO or the court, the owner should hold off on filing the Section 15 declaration until the proceeding is finally disposed of including any appeals.

Can the trademark registration be invalidated for fraud if the Section 15 declaration is filed when a proceeding involving the trademark rights is pending with the USPTO or the court? In a recent case before the United States Court of Appeals for the Federal Circuit (“CAFC”), Great Concepts, LLC v. Chutter, Inc., 2022-1212 (Decided October 18, 2023), the CAFC held that Section 14 of the Trademark Act does not permit the USPTO to cancel a reg. ration due to the owner filing a fraudulent Section 15 declaration to acquire incontestability of a registered mark. In Great Concepts, Great Concepts, LLC, the owner of the trademark registration, filed a Section 15 declaration declaring “there is no proceeding involving the trademark rights pending and not finally disposed of” either in the USPTO or in the courts, which was a false statement because there was both a cancellation proceeding in the USPTO and an Eleventh Circuit appeal pending. Chutter, Inc. subsequently petitioned the USPTO for cancellation of Great Concepts, LLC’s trademark registration. The USPTO issued a decision finding that the Section 15 declaration was fraudulent and cancelling the trademark registration under Section 14 of the Trademark Act. Great Concepts, LLC appealed to the CAFC, which found that Section 14 only applied to fraud in procuring a trademark registration or renewal and thus did not apply to cancel a trademark registration for a fraudulent Section 15 declaration. However, the CAFC emphasized that nothing in this opinion should be read to mean that the USPTO is powerless to address fraud committed solely in conjunction with the filing of a Section 15 declaration including sanctioning an attorney or criminal prosecution.

In summary, after the trademark has been registered, U.S. trademark registrations can be cancelled based on a likelihood of confusion, abandonment, dilution, deceptiveness, and if the mark is merely descriptive or has become generic or functional within five consecutive years subsequent to the date of registration. However, after the trademark has been in continuous use for five consecutive years subsequent to the date of registration, the owner of the trademark registration may file for “incontestable” status by filing a Section 15 declaration. As a practice tip, the Section 15 declaration should be filed at the same time the Section 8 Declaration of Use is filed if there is no proceeding that is pending with either the USPTO or the court. However, if there is a proceeding involving the trademark rights that is pending with either the USPTO or the court, the owner should hold off on filing the Section 15 declaration until the proceeding is finally disposed of including any appeals. If the trademark registration becomes incontestable, a third party may only petition for cancellation of the trademark registration based on the registered mark becoming generic, or is functional, or has been abandoned for non-use, or its registration was obtained fraudulently. This will make it more difficult for a trademark registration to be invalidated.

Charter of the French Language

The Quebec Charter of the French Language (the “Charter”) was adopted nearly 50 years ago to protect the status of the French language in the province of Quebec. It includes many rules, several of them directed at the language of business in Quebec, and some regarding the use of French on both product packaging and signage/advertising.  

Presently, all product labelling and commercial signs appearing in Quebec must be in French – but the Charter provides certain exceptions for trademarks. 

Amendments to the Charter are expected to come into force on June 1, 2025. Those amendments will significantly restrict those trademark exceptions and have other important consequences for trademark and business owners operating in Quebec.

As of June 1, 2025, unless a trademark appearing on a product, on a storefront or in commercial advertising is registered in Canada, a French version of that mark will have to appear. Furthermore, if the French version of the trademark has been applied for or registered in Canada, that French version will also have to appear.

The Canadian Trademarks Office is experiencing significant delays and it is difficult to obtain a registration in less than 3 years. This is likely why Draft Regulations issued on January 10, 2024, expanded the scope of “registered trademark” to include trademarks for which an application is pending before the Trademarks Office. This provides some breathing room for brand owners, but they should nonetheless start preparing well ahead of the June 1, 2025 deadline.

This is in part because the changes to the Charter will also affect how brand owners display their mark and their business name on products, storefronts and commercial advertising.

For example, if a non-French trademark appears on a product, storefront or commercial advertising, that product or signage will also have to include a “markedly predominant” generic term or description, in French, to identify the product or service in question. That French text will have to be twice as large as the other text and otherwise have a more important visual impact.

Also, for signage that identifies the business with an expression other than French, including a registered trademark, and that can be seen from outside the business, that signage must include a “markedly predominant” generic term or description to identify the business.

In most cases, the generic term/description appearing in French will be smaller than the trademark, and business owners will need to work at changing their signage and labelling ahead of the June 1, 2025 deadline.

The changes to the Charter will affect the language in which content appears on websites and social media accounts, and in brochures, catalogues and similar commercial publications.

The Quebec version of those materials does not have to have the same content as that for other provinces, but the Quebec version, in French, must be made available under conditions that are at least as favourable as those available in other languages.

After June 1, 2025, businesses that fail to comply with the requirements of the Charter expose themselves to sanctions ranging between $3,000 to $30,000. Fines for second offences are doubled and thereafter tripled. Significantly, every day of non-compliance is considered to be a separate offence.

Trademark Considerations for Copyrighted Works in the Public Domain

In the United States, an original work of authorship fixed in a tangible medium of expression (meaning the work can be communicated in a visual or audio form) is a protectable copyright. This means that the owner has the exclusive right to reproduce, adapt, publish, perform, and display the work. Because copyright protection has a set term, copyrights in certain works necessarily expire each year and enter the public domain. Once a work has entered the public domain, it no longer retains copyright protection and cannot stop use of the work by others based on its prior copyright rights. However, a work’s copyright expiration does not extinguish any trademark
rights that the owner may maintain in that same work. This is because protection of trademarks, which are words, phrases, symbols, and designs that identify the source of goods or services, is separate from protection of copyrights and does not necessarily expire so long as the work is continuously and regularly used as a trademark.

On January 1, 2024, the copyrights in a number of recognizable works entered the public domain, including, among others, Disney’s iconic Mickey Mouse film “Steamboat Willie,” along with the specific depictions of Mickey Mouse and other characters in the film; A. A. Milne’s book, with illustrations by E. H. Shepard, “House
at Pooh Corner,” which introduced the Tigger character; and D.H. Lawrence’s book “Lady Chatterley’s Lover.” This means that there is no longer copyright protection in these works or the specific depictions of characters in them. But it is important to remember that any existing trademark protection in them subsists.

For example, Disney owns separate and enforceable trademark rights in its Mickey Mouse character and has apparently taken steps to shore up its trademark rights in “Steamboat Willie.” Specifically, Disney owns a federal
trademark registration for an iconic video clip from the “Steamboat Willie” film, which is used in connection with certain Disney motion pictures. Further, Disney still owns valid copyright and trademark rights in other, more modern versions of Mickey Mouse.

What does this mean for marketers who may be interested in producing advertising content using copyrighted works that have entered the public domain? They should closely consider whether these proposed uses present trademark and false advertising risks. They should also assess whether proposed modifications to the depiction
of public domain content may nevertheless present copyright risks to the extent that such modifications are substantially like variations of such characters that are not yet in the public domain and are still subject to copyright protection.