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Trademark Infringement: AM General vs. Activision Blizzard
By Ivan Blomqvist. Junior Lawyer.
In 2017, AM General LLC known for manufacturing the military vehicle known as the Humvee, sued Activision Blizzard, Inc., citing that Activision closely copied the design of the vehicle for several issues of the popular Call of Duty video game franchise, as well for repeatedly invoking the “Humvee” trademark and utilizing the vehicle and trademarks in various promotional materials.
The defendant argued that the strong protection afforded by the First Amendment warranted the dismissal of the AM General’s claims.
In April 2020, the court found, by using the Rogers Test, that Activision Blizzard’s interest in presenting military verisimilitude easily met the low bar for artistic relevance. Furthermore, by using the Polaroid Factors the court determined that Activision Blizzard’s use of Humvees was not explicitly misleading. Although some surveys did show some potential confusion amongst users, the fact that AM General was a manufacturer of vehicles and Activision Blizzard was a producer of video games heavily weighed against such assumptions.
In summary, the Court held in its decision to grant a summary judgment to Activision Blizzard against all of AM General’s claims, that “enhancing the games’ realism” was enough to determine the use of Humvees a part of the games artistic expression.
Such a case will prove helpful to art producers from all walks of life who might want to include possibly trademarked material in attempts to more closely ground their art in reality.
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Argentinian Patent and Trademark Office Establishes the Reinstatement of all Suspended Terms by Resolution No. 194-2020.
The Argentine Patent and Trademark Office published in the Official Electronic Bulletin dated November 24, 2020, Resolution No. 194-2020. This Resolution establishes the reinstatement of all suspended terms as from December 14, 2020.
We will continue to provide legal updates as needed and requested, to our clients and colleagues worldwide, and wish you to stay healthy and safe.
Please do not hesitate to contact us at any time with any doubt or question you may have.
Source: https://www.boletinoficial.gob.ar/detalleAviso/primera/237589/20201124
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Argentinian Patent and Trademark Office Extends Suspension of Terms by Resolution Nr. 183-2020.
The Argentinian Patent and Trademark Office published the Resolution N 183-2020 in the Electronic Official Bulletin of November 10, 2020, introducing the following:
Considering the current sanitary emergency, to extend the suspension of terms determined by the Resolutions N 16-2020, 22-2020, 34-2020, 37-2020, 42-2020, 47-2020, 51-2020, 69-2020, 78-2020, 116-2020, 127-2020, 142-2020, 167-2020 and 171-2020 until November 29, 2020, inclusive.
We will continue to provide legal updates as needed and requested, to our clients and colleagues worldwide, and wish you to stay healthy and safe.
Source: https://www.boletinoficial.gob.ar/detalleAviso/primera/237127/20201110
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Argentinian Patent and Trademark Office Extends Suspension of Terms by Resolution Nr. 171-2020.
The Argentinian Patent and Trademark Office published the Resolution N 171-2020 in the Electronic Official Bulletin of October 27, 2020, introducing the following:
Considering the current sanitary emergency, to extend the suspension of terms determined by the Resolutions N 16-2020, 22-2020, 34-2020, 37-2020, 42-2020, 47-2020, 51-2020, 69-2020, 78-2020, 116-2020, 127-2020, 142-2020 and 167-2020 until November 8, 2020, inclusive.
We will continue to provide legal updates as needed and requested, to our clients and colleagues worldwide, and wish you to stay healthy and safe.
Source: https://www.boletinoficial.gob.ar/detalleAviso/primera/236557/20201027
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Argentinian Patent and Trademark Office Extends Suspension of Terms by Resolution Nr. 167-2020.
The Argentinian Patent and Trademark Office published the Resolution N 167-2020 in the Electronic Official Bulletin of October 14th, 2020, introducing the following:
Considering the current sanitary emergency, to extend the suspension of terms determined by the Resolutions N 16-2020, 22-2020, 34-2020, 37-2020, 42-2020, 47-2020, 51-2020, 69-2020, 78-2020, 116-2020, 127-2020 and 142-2020 until October 25th, 2020, inclusive.
We will continue to provide legal updates as needed and requested, to our clients and colleagues worldwide, and wish you to stay healthy and safe.
Please do not hesitate to contact us at any time with any doubt or questions you may have.
Source: https://www.boletinoficial.gob.ar/detalleAviso/primera/236001/20201014
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Argentinian Patent and Trademark Office Extends Suspension of Terms by Resolution Nr. 127-2020.
Considering the current sanitary emergency, to extend the suspension of terms determined by the Resolutions N 16-2020, 22-2020, 34-2020, 37-2020, 42-2020, 47-2020, 51-2020, 69-2020, 78-2020, and 116-2020 until September 20th, 2020, inclusive.
We will continue to provide legal updates as needed and requested, to our clients and colleagues worldwide, and wish you to stay healthy and safe.
Please do not hesitate to contact us at any time with any doubt or questions you may have.
Source: https://www.boletinoficial.gob.ar/detalleAviso/primera/234385/20200901
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What is a Notice of Opposition Against an EU Trademark Application and What Can I Do About it?
When filing for an EU Trademark to protect your brand, you might receive a Notice of Opposition from the EUIPO. You might be worried about this. Maybe you’re asking yourself: What is a notice of opposition? What can I do to register my trademark now? How can I make sure that my brand is protected in the EU? In this article, we will explain what a Notice of Opposition is and how to deal with it to ensure that you protect your IP.
First, let’s remind ourselves of the application process for EU trademarks.
Recap of EU Trademark Application Process
We must remember that once you have sent your application away, the EUIPO examiner will analyze it and look for any problems. If provisionally approved, your application will be published in the EU Trade Marks Bulletin for all to see. Any party that already owns a registered trademark now has 3 months to file a Notice of Opposition, which will prevent you from being granted protection for your trademark.
What is a Notice of Opposition?
A Notice of Opposition filed by a preregistered EU trademark holder is a claim to the EUIPO that your future trademark infringes on their pre-existing trademark, or is too similar and could cause confusion. This must be done by the opposing party within 3 months of publication in the EU Trade Marks Bulletin.
Once the filing has been completed, and the opposing party has paid the corresponding fees, the Opposition Division of the EUIPO will examine the Notice and determine its admissibility. This admissibility test is conducted in accordance with the EU Trademark Regulation. If it passes the test, you will be advised of the Notice and the next phase of the procedure will begin.
What can I do against a Notice of Opposition?
In order to go against a Notice of Opposition, you must first know the procedure that will be followed. Firstly, there will be a 2-month period in which you may negotiate with the opposing party to try to come to some sort of arrangement. If unsuccessful, you will then have to argue before the EUIPO. These are known as the cooling-off period and the adversarial stage.
Cooling-off period
Once you have been informed of the Notice of Opposition, a 2-month period begins in which you and the opposing party may attempt to reach a friendly settlement. This is known as the ‘cooling-off’ period. If you are able to reach an agreement with the opposing party, then whatever you agree shall be established and neither side will have to pay any costs for further phases of the procedure. If, however, you are unable to come to an agreement, the adversarial stage shall begin in which you must argue with the opposing party before the EUIPO as to why your trademark should be granted protection and, more importantly, why it is not infringing on the pre-existing trademark, nor is so similar that it would cause confusion.
Adversarial stage
In this next stage, the opposing party must complete his opposition filing within 2 months of the end of the cooling-off period – the Notice of Opposition was merely provisional. Here, the opposing party will include all evidence that supports his case, as well as proving that the IP rights he is invoking from his trademark truly exist and are valid. For an extensive description of what the opposing party must file and the requirements for doing so, check the Guidelines for Examination in the Office.
Responding to the Notice of Opposition
Proof of Use
In responding to the opposition, in the case that you believe the opposing party may very well have a registered trademark, but is not actually using it, you may request proof of use. This requires the opposing party to submit additional documentation that proves that he is actively using his trademark in a commercial environment. It is essential that every trademark owner is aware that it’s using it or lose it when it comes to opposition proceedings.
Restrictions of your Trademark Application
When filing the application to register your trademark, you will have had to specify which goods and services are traded under the brand. As this could be the grounds for the Opposition in the first place, you may also decide to restrict your application in order to limit the goods and services you provide under that brand, to prevent any potential infringement of the opposing party’s protection. This would only work in specific cases in which you and the opposing party are operating in similar or overlapping sectors. It is important to mention here that the EUIPO will not accept restrictions that are conditional. The restriction must be absolute and unconditional.
Formulate a Strong Legal Argument
Make a strong legal argument behind why your trademark application is acceptable may seem rather obvious, but it is much easier said than done. There is a reason that lawyers dedicate their entire professional lives to IP law. It is an area of the law that is always changing and evolving, not to mention that it has the potential to be incredibly subjective, given that a key factor in a EUIPO decision is how similar it looks compared to the pre-existing trademark.
If you want to have the best chances at a successful trademark application, it is highly recommended to hire the services of an experienced IP lawyer to go through the process with you. At Moeller IP, we have been practicing solely IP law for nearly 100 years across the world, and there is still more to do. If you would like to clarify some doubts, please don’t hesitate to contact us right away.
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What is a Provisional Refusal Opposing an International Trademark Registration and What Can I do?
After jumping through all the hoops to register your international trademark, filing the application, and following various quick guides on how to do so, it can be quite concerning to receive a notification of provisional refusal, stating that your trademark, your brand, has hit an obstacle in being protected.
What can I do to protect my IP now? you might be thinking. In this article, we will go over what a provisional refusal is, why it was most likely issued, and what you can do to oppose it and protect your brand.
International TM Registration Recap
The first thing to remember is the process of international trademark registration. After being initially approved by the WIPO, the notification is then sent out to all national trademark offices belonging to Contracting Parties of the Madrid Protocol. The national offices now have up to 12 months to grant or refuse protection (18 months in certain cases). If they refuse, they must send a Notification of Provisional Refusal to the WIPO, where you will soon after receiving news of it through the Madrid Monitor. It will probably look something like this.
It is important to note that it is not a final decision, but instead, the Office must indicate the reasons for why it could likely get refused. This could be from either a negative examination by the Office itself or due to an opposition from a third party. Such an opposition will most likely be from a local company, a preregistered TM holder, that believes that your trademark is infringing upon theirs, or is too similar to their own and could get confused.
It should be noted that this is a provisional refusal by opposition, which is different from an ex officio refusal, which occurs when the national office finds a fault in the application and decides to refuse protection of their own accord.
What can I do against a provisional refusal?
The next step will depend upon which country’s IP office put forward the provisional refusal. Each national office has its own specific procedure to deal with the matter.
All the necessary details should be included in the notification of provisional refusal you received. These details would likely include the grounds for the provisional refusal, the time period in which you must reply to the refusal and request a review/appeal, to whom you should direct such reply, and if you need to hire a local attorney in that country to assist you with the procedure.
If your request for review and appeal is accepted by the national IP office, you will likely have your trademark application compared with an already existing trademark registered nationally in that country.
Depending on what exactly you are wanting to register, the national IP office will compare the shapes, colors, words, and letters included, as well as the similarity of the service/good in relation to the pre-existing trademark, also taking into account the sectorial similarities if any exist. This process may take many months to come to its conclusion, however, every national office has its own rules and deadlines, so you should be very aware of the specific situation of every country.
To learn more about a specific country’s provisional refusal rules and procedures, take a look at our country-by-country guide that will take you through everything you need to know. EU & UK Guide. China & USA Guide. Brazil & Germany Spain & France.
Replying to a provisional refusal
Replying to a provisional refusal will often mean that you will have to convince the national office or a court of appeals why your trademark is sufficiently different from an already existing one in order to be granted protection of your IP. To do so effectively requires not only a strong argument regarding the differentiation of the trademark but also a comprehensive understanding of the legislation and the case-law of that country. Therefore, it is highly recommended that if you receive a notification of provisional refusal regarding your international trademark registration, that you should hire an experienced IP lawyer to help you in the process.
If you are wanting to reply to a provisional refusal, we have vast experience in these procedures and would be more than happy to explain the situation to you and see how we could help out. Contact us!
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American Region Suspension Deadlines COVID-19
By Moeller IP.
The latest update about the suspension of deadlines in the American Region Patent and Trademark Office.
Argentina:
| Brazil:
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Uruguay:
| Paraguay:
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Chile:
| Peru:
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Ecuador:
| Colombia:
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Venezuela:
| Mexico:
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Panama:
| Guatemala:
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El Salvador:
| Nicaragua:
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Honduras:
| Dominican Republic:
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Cuba:
| Bolivia:
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INPI Brazil | New Extension of Deadlines in Brazil by Ordinance No. 166/2020
By Carlos Cavalcanti. Lawyer, Managing Partner at Moeller IP Brazil.
Brazilian PTO published this Tuesday (04/28), Ordinance No. 166/2020, which extends until May 15, 2020, the suspension of deadlines referred to in Ordinance No. 120 and 160/2020, due to administrative measures to prevent infection and the spread of COVID-19.
- The Ordinance applies to all processes pending at Brazilian PTO, regardless of their nature. Therefore, deadlines are suspended for all cases.
- The Ordinance also implies the interruption of the counting of the deadlines that are in progress, which will flow again for the time remaining at the end of the suspension period. In other words, the term will be counted from where it left off.
- The terms that start in this period will start counting after the end of the suspension.
- The use of term suspension is optional and the user can petition at the INPI, through the online systems, if they prefer.
We will continue to provide legal updates as needed and requested, to our clients and colleagues worldwide, and wish you to stay healthy and safe.
Please do not hesitate to contact us at any time with any doubt or questions you may have.
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