The ability to register a trademark in the member countries of the European Union (currently 30) in a single application has been available under the Community Trademark system (CTM) since the mid-1990’s. The basic fee (900€, currently about $1,215US) for filing a CTM covers the cost of filing in up to three classes.1
The European Commission (EC) proposed revisions to the current CTM system in March 2013. Among other revisions was a change to the fee schedule. Under the proposal, fees would be payable per class — 775€ for one class, 825€ for two classes and 900€ for three classes. Renewal fees are proposed at 1,000€ for one class, 1,100€ for two classes and 1,250€ for three classes.
The EC’s proposed revisions should assist most brand owners. Under the existing system, trademark owners typically select coverage in all three classes even though the mark may only be used in a single class. For example, a business may include class 16 (paper goods) even though it only uses paper goods for marketing the actual product. By moving to a one-class system, businesses will pay less when seeking to obtain protection for only one or two classes. In addition, proposed marks will face less barriers from unused marks on the register in classes arbitrarily picked under the old system. Lastly, the need to file unnecessary oppositions (actions to remove unused marks) should decrease.
While most of the EC’s proposed revisions must be adopted by the European Parliament and the European Council, …
Continue Reading →
The Fifth Circuit Court of Appeals recently held that an arbitrator did not exceed his powers when he expanded an eight-year license to use a video game’s trademarks into a perpetual license to use all the intellectual property rights associated with the game. See Timegate Studios, Inc. v. Southpeak Interactive, L.L.C., ___ F.3d ___, 2013 U.S. App. LEXIS 7184, No. 12-20256 (5th Cir. Apr. 9, 2013).
Under the Federal Arbitration Act, an arbitrator does not exceed his powers unless “he has utterly contorted the evident purpose and intent of the parties—the ‘essence’ of the contract.” Timegate Studios, slip op. at 9. The Fifth Circuit found that the arbitrator’s remedy of a perpetual license was “rationally rooted” in the agreement between the parties and therefore reinstated the arbitrator’s award after the district court had vacated it.
In 2007, Timegate Studios, Inc. (“Timegate”) entered into a 46-page video game publishing agreement with Gone Off Deep, L.L.C. d/b/a Gamecock Media Group (“Gamecock”). The agreement obligated Timegate to develop a futuristic military-style video game entitled “Section 8,” and it obligated Gamecock to publish the game. As the publisher, Gamecock agreed to provide most of the investment funding for the game’s development and to manufacture, market, distribute, and sell the game after its development.…
Continue Reading →
A court in the Southern District of New York enjoined the defendants from selling fashion apparel in the United States that allegedly infringed the plaintiff’s trademarks, but it declined to exercise extraterritorial jurisdiction to stop the defendants from using their Hong Kong website to continue selling the same apparel to the rest of the world. See Juicy Couture, Inc. v. Bella Int’l Ltd. , No. 12 Civ. 5801, 2013 U.S. Dist. LEXIS 34846 (S.D.N.Y. Mar. 12, 2013). The court reasoned that it had to “proceed with caution in determining” whether to apply the Lanham Act extraterritorially because the parties were currently litigating in Hong Kong over whether the defendants had valid trademark rights there.
This case illustrates the difficulties U.S. companies can face when trying to stop infringing conduct that is happening abroad. Though trademark owners may use the Lanham Act to enjoin infringing activities outside the United States, U.S. courts will grant this relief only when the trademark owner can show it is necessary to prevent harm to commerce in the United States. Because this can be a tough standard to meet, it is important for U.S. businesses to consider the need for registering their trademarks domestically as well as internationally and for having a strategy to enforce their trademark rights in foreign countries.…
Continue Reading →