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Welcome to new member firm for Czech Republic

We are pleased to welcome our latest new member to the Mackrell International ‘family’:

Member for Czech Republic: Mašek, Kočí, Aujezdský (MKA Nosko)

Key contacts: Josef Aujezdský josef.aujezdsky@mkanosko.cz and Petr Kočí petr.koci@mkanosko.cz

Website : www.mka-nosko.cz

Meet Josef and the team and discover ‘Czech Republic in a nutshell’.

And what do they say about themselves?......

We are medium-sized law firm operating in Czech and Slovakian market. From very modest beginning as a boutique IT law firm we have expanded to other areas of law. If you are ever travelling to Prague, do not hesitate to stop by.

All their key information is available on our website: https://www.mackrell.net/firm/ma%C5%A1ek-ko%C4%8D%C3%AD-aujezdsk%C3%BD-m...

Please do get in touch with them to welcome them to the MI family and to find out more

Josef Aujezdský

Mašek, Kočí, Aujezdský (MKA Nosko)

Petr Kočí

Mašek, Kočí, Aujezdský (MKA Nosko)

The Mackrell Minute on ‘Connect the World Challenge’

In this month's Mackrell International Minute Managing Director Keith Heddle explains our 'Connect the World Challenge'.

Download our Easy Guide to the Challenge and helping Children all around the world.

Keith Heddle

Mackrell International

The Trademark Modernization Act of 2020

Dana Brody Brown Mackrell International Member Firm for Northern California, Hoge Fenton Jones & Appel spoke at the Mackrell International webinar titled "Pandemic Aftermath: Shield your IP in this Digital Era”.

The United States has recently passed The Trademark Modernization Act of 2020 aiming to improve the integrity of the US trademark register.

With an enormous influx of trademark registration applications in recent years, the US Patent and Trademark Office (PTO) has indicated that many registrations evidence insufficient use. The Trademark Modernization Act is designed to address this issue, as well as to address a US circuit court split regarding the standard for injunctive relief requests in trademark infringement cases.

The Act, first, allows for two new ex parte cancellation procedures.

Under current US law, any trademark cancellation must be done through the Trademark Trial and Appeal Board (TTAB). This is often an expensive and time-consuming process that resembles a sort of mini-litigation.

The first of the new procedures is called an expungement. In this case, a third party is alleging that the Registrant has never used the trademark in commerce in the US, either as a whole or with regard to certain of the goods or services claimed and must be brought between 3 and 10 years after the registration date.

The second of these new procedures is known as re-examination. This procedure is appropriate where a third party alleges that the mark was not actually in use as of the date alleged in the application or statement of use and must be brought within the first 5 years after registration.

Both of these new procedures are designed to allow for substantially faster and less expensive cancellation of registrations with use problems.

In addition, the Act provides a new ground for cancellation proceedings before the TTAB. This new ground is similar to expungement. However, it remains available to third parties outside of the expungement procedure timeframe and can be raised along with other issues supporting the cancellation argument.

The Act also provides USPTO examiners the discretion to flexibly set office action response deadlines shorter than the customary 6-months. The final change to prosecution is the formalization of the process of filing letters of protest. In practice informally for years, the Act now allows for letters protesting the approval of a trademark application to be filed within the examination period, for consideration by the PTO examiner. Examiners will have two months to act on protest submissions. This is, in short, an opportunity for third parties to object to applications without the need to either wait for the examination process to be completed or to endure a full-blown opposition proceeding.

Finally, the Trademark Modernization Act resolves a split in US Circuit Courts regarding the standard to be used when a plaintiff in litigation seeks an injunction against continuing use of a mark. The Act establishes a uniform rule that, when trademark owners seek injunctive relief, they are entitled to a rebuttable presumption of irreparable harm. This eases the burden of proof upon trademark owners, essentially shifting the burden to a defendant to rebut that presumption.

In conclusion, all of these changes are designed to encourage third parties to help to police the US trademark register. They are also designed to help speed the process of review examination in the US and to make brand enforcement by trademark owners a less onerous and expensive process.

Please note two takeaways for brand owners with US trademark registrations:

. there are new tools available to enforce your rights, and

. be prepared to prove use of your marks in US commerce!

You can view the entire session at https://youtu.be/nkNPj35hO-A

Dana Brody-Brown

Hoge Fenton Jones & Appel, Inc.

Protecting Your Intellectual Property on E-Commerce Platforms in the Pandemic Aftermath

Anita Gerewal, Mackrell International Member Firm for Malaysia, Ram Caroline Sha & Syah, spoke at the Mackrell International webinar titled Pandemic Aftermath: Shield your IP in this Digital Era”.

The COVID-19 pandemic has changed the landscape of intellectual property protection for businesses operating e-commerce platforms.

Due to the pandemic, many brick-and-mortar businesses have pivoted to online platforms. While many businesses had already invested in an online presence, the influx of new digital activity has resulted in a high degree of product and service saturation and competition.

The result has been a drastic need for these newly electronic enterprises to become proactive about reaching customers in the digital marketplace. It is not now enough for a business to set up a website and to simply sit back and wait for customers to find them.

Thus, a variety of online marketplaces have emerged. Major e-commerce players such as Amazon and Alibaba existed prior to the pandemic. However, others such as localized platforms; Shopee and Lazada have gained prominence in the past year.

Additionally, social media outlets such as Instagram and Facebook have now also become e-commerce platforms. No longer do these platforms exist merely to facilitate conversation, they have now introduced tools that allow users to sell goods and services online.

It is not strictly speaking even necessary to maintain a dedicated website any longer.

With this increased online activity, of course, come issues of security and intellectual property protection.

An e-commerce presence means that a business is sharing its brand on global platforms, accessible by anyone, with any intention.

Online infringement has increased accordingly. What we see, however, is not simply the typical variety of goods counterfeiting or gray market goods but more novel types of infringement such as sales by unauthorized distributors and unfair competition.

For example, genuine items are being sold without copyright consent or with unauthorized pricing decreases.

There is no control over price by brand owners. They are losing control of the ability to set a market price for a product and end up competing with themselves, to an extent.

The race to compete in e-marketplaces has created a need for enterprises to move fast and to change more quickly than they were prepared to do. They look for shortcuts.

Instead of creating a new process or innovating, they emulate their competitors or copy a known process without thought as to whether they are infringing upon someone else’s intellectual property.

It doesn’t help that many national patent, trademark, and copyright registration offices have slowed the approval processes for such applications drastically at this same time, due to the pandemic’s effect upon their own staffing and resources as well as due to the huge increase in applicants.

Given all of this, what do brand owners need to be aware of?

First, IP owners have to be very quick with research and development. When they innovate, they must move quickly to register their intellectual properties with the appropriate authorities.

They must then move just as quickly to enforce their intellectual property rights when infringement does occur. Most e-commerce platforms have processes in place for quickly lodging complaints and issuing take-down notices.

Brand owners should take advantage of these tools.

It is vital to monitor your IP portfolios and licenses to ensure that new processes and channels of commerce into which your business has entered is covered by existing intellectual property ownership, to enforce those existing assets, and to register new patents and trademarks where necessary to sweep those new processes into your portfolio.

Vigilance is a must.

You can view the entire session at https://youtu.be/nkNPj35hO-A

Anita Gerewal

Ram Caroline Sha & Syah

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