By Nathaniel DeLucia

Playboy is one of the most recognizable trademarks in the world with registered trademarks in virtually every developed country.  It therefore comes as no surprise that Playboy Enterprises Inc. took issue when Michael Ross a property-developer in London, decided to register the domain name “Playboy.london.” Playboy won the initial lawsuit, filed with the World Intellectual Property Organization (WIPO). However, Mr. Ross filed a subsequent suit in the UK, which has yet to be decided, attempting to block implantation of the adverse WIPO ruling.

A current trend is to use common words as domain names, such as “.tech” or “.london.”  As Web domains begin to collide with Trademark law, lawsuits like the one here should be seen with increasing regularity.

For the complete story, including a brief summary of the WIPO ruling, visit Bloomberg News.

Read More

March 03, 2015

By Maurice N. Ross*

By Michael Darcy Brown, Stock Photo 45685957

The U.S. has long been the world’s leader in protecting intellectual property rights, often criticizing China, Russia, India, and countries in Latin America for lack of respect for patents, copyrights, and other intellectual property rights. China, India, and to a lesser extent Russia have made significant progress towards acknowledging the importance of respecting intellectual property rights in international trade. Ironically, however, a war is being waged within the U.S. to weaken U.S. intellectual property right laws and make it more difficult to enforce U.S. patents, copyrights, and trademarks against counterfeiters and other infringers. The outcome of this war—being waged in both federal and state legislatures within the United States—could have a profound impact on international trade. 

The “founding fathers” of the United States believed that it was crucial for the economic success of America’s fledgling democracy to provide economic incentives for those who devote their energies to developing new technologies as well as works of art, music, and literature. Thus, pursuant to Article I, Section 8 of the U.S. Constitution, Congress was empowered: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”  

Read More

November 19, 2013

By Min Wu

Foreign companies often fail to register the Chinese translations of their international trademarks in China, and competitors often piggy-back on their reputation by registering and using the translated Chinese trademarks. Chinese courts are traditionally reluctant to hold that the Chinese translations are “similar” to the registered trademarks in foreign languages, and the international trademarks holders cannot succeed in a trademark infringement proceeding.

As reported by mondaq.com, a recent Leroy-Somer case might give hope to the protection of the Chinese translations of international trademarks. In that case, the Superior People’s Court in Fujian Province confirmed the similarity between “LEROY-SOMER” and its Chinese translation “利莱森玛.” Selecting the Leroy-Somer case as a model case for intellectual property protection, the Supreme People’s Court noted that “the famous nature of the foreign language trademarks, the Plaintiff’s prior use of the Chinese translation version, and public recognition of the corresponding relationship between the foreign language trademarks and its Chinese language translation” are factors that favors a finding of similarity.

Read more at mondaq.com.

Read More

October 01, 2013