This blog channel will be discontinued on February 11, 2022. We will keep sharing insightful content about intellectual property issues, including trademark and copyright, on our DLA Piper website. To receive email alerts about our communications,  please complete this form: Intellectual Property and Technology Sign-up Form We thank you for your support, and we look forward to keeping you up to date on breaking IP news and trends ..read more

By: Sangeetha Punniyamoorthy and Aleksandar Kaludjerovic Trademark applications are generally examined in the order they are received by the Canadian Intellectual Property Office (“CIPO”). The rationale being that examining an application out of order creates a favourable position for one applicant at the expense of other applicants. Therefore, expedited examination is generally not available for Canadian trademark applications, apart from the temporary practice implemented in light of COVID-19 (as discussed here). However, CIPO is now permitting expedited examination of Canadian tra ..read more

Authors: Alexis Fierens, Elisabeth Daem, Emma Stockman On 17 December 2020, Advocate General (A-G) Szpunar delivered his opinion on the highly anticipated Mircom International Content Management v Telenet and others case (C-597/19) before the European Court of Justice (CJEU) thus shedding a first light on several current hot topics in copyright law. The opinion highlights to what extent users are making a communication to the public when sharing peer-to-peer files and emphasizes the importance of a company’s business model as to (i) the entitlement to exploit its copyrights and (ii) finding a ..read more

By Alexis Fierens, Kristof De Vulder and Heidi Waem Software licensing audits are commonly used by software vendors to verify compliance with the terms and conditions of software license agreements. Software license agreements typically contain an audit right for the software vendor (licensor) and an obligation for the licensee to co-operate during such audits. Licensing audits are, in principle, an effective tool for software vendors to ensure that the licensees’ use of the relevant software is covered by sufficient licenses. However, in practice, various issues may arise at different stages ..read more

By: Alexis Fierens, Heidi Waem, and Thomas Gils On 2 April 2020, the Court of Justice of the European Union (“CJEU”) issued an interesting decision in relation to a request for a preliminary ruling with respect to a dispute concerning copyrights. Facts The request for a preliminary ruling in this case was made in connection with two separate but similar cases pending before the Swedish Supreme Court (Högsta domstolen). The first dispute involved Stim (Föreningen Svenska Tonsättares Internationella Musikbyrå), the Swedish organisation which collectively manages copyright in music, and Fleetmana ..read more

By: John Wilks and Ella Castle Continuing their focus on the online gambling sector during lockdown, the UK Committees of Advertising Practice (CAP) have published an Advice Note to all GB-licensed gambling operators in relation to ads on social media for eSports betting. The advice makes it clear that eSports betting-related advertising must comply with the rules which apply to other forms of gambling advertising, and provides advice on compliance with the rules in the specific context of eSports betting marketing published on social media. This is the first guidance issued by CAP in relation ..read more

By Keith Medansky, Michael Geller, Ed Chatterton, Niels Mulder, Melinda Upton and Leigh Martin While the United States Patent and Trademark Office (USPTO) remains open, on March 31, 2020, the USPTO announced certain deadlines may be eligible for an extension if a party cannot meet its obligations due to the coronavirus disease 2019 (COVID-19) outbreak.  Specific deadlines falling between March 27, 2020 and April 30, 2020 may be extended to 30 days from the initial due date if the ultimate filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak ..read more

By: Raf Schoefs and Thomas Gils The Court of Justice of the European Union (CJEU) ruled that the failure to comply with a clause relating to intellectual property rights in a software license agreement must be regarded as an ‘infringement of intellectual property rights’ within the meaning of the Enforcement Directive, and not merely as a contractual breach. Therefore, the holder of the intellectual property rights should be able to benefit from the guarantees provided by the latter Directive, irrespective of which (national) liability regime (contractual or extra-contractual) applies. The cau ..read more

By: Melinda Upton, Jessie Buchan, Valiant Warzecha, and Alexandra Moore  The Federal Court of Australia (FCA) recently handed down its decision in the case that all Australian burger lovers have been eagerly watching – infringement proceedings brought by US burger chain, In-N-Out Inc. (INO), against Sydney based burger chain, Hashtag Burger Pty Ltd, trading as D#wn-N-Out (DNO). Having regard to overwhelming evidence, the court found for INO on all grounds – namely, that DNO had infringed the “IN-N-OUT BURGERS” trade mark, engaged in misleading and deceptive conduct under the Australian Consume ..read more

By: Michael Geller The USPTO has shifted course on a new rule which required applicants and registrants to provide a company-monitored email address for trademark filings.  The USPTO’s new rule met strong criticism from various sources who raised concerns about privacy, spam and other issues. In the newly revised rule, applicants and registrants may provide an email address of their choice in the “Owner” field for filings.  Gone is the requirement that the address be monitored by the company.  Instead, the email address simply cannot be “identical to the listed primary correspondence email add ..read more