Catagory:IP: Trade Marks, Copyright & Designs

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Brand Guardians: Effective Strategies Against Cyber Counterfeiting: Part 2
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Brand Guardians: Effective Strategies Against Cyber Counterfeiting: Part 1
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You’re Gonna Hear Me Roar: Katy Perry Wins Appeal Against Local Australian Fashion Designer
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Influenced by Influencers? Legislative Updates to Illegal Content in the Digital Age
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Levi Strauss Settles Trademark Dispute Over Pocket Tab on Jeans
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Chanel Seeks Permanent Injunction Against WGACA
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Battle of the Bags: UNIQLO Sues SHEIN in Japan Over Viral Handbag Dupe
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Victory for Chanel in Luxury Reseller Trial
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Walking the Fine “Broken” Line in Designs
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Up in Arms: Giorgio Armani Wins Trade Mark Battle Over Arman’s Fine Jewellery

Brand Guardians: Effective Strategies Against Cyber Counterfeiting: Part 2

Our first article in this series highlighted the financial and reputational damage counterfeiting causes to brand owners and the significant societal consequences associated with the reproduction, sale and dissemination of counterfeit products around the globe. We looked at how having strong Intellectual Property (IP) protection, selling through social or e-commerce platforms that have rigorous seller verification processes and educating consumers, retail and social platforms about the difference between genuine and counterfeit products, are all fundamental strategies which can be effective in the fight against online counterfeiting. Supplementing these steps with strategic enforcement action and IP protection measures are equally important.

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Brand Guardians: Effective Strategies Against Cyber Counterfeiting: Part 1

In this two-part series, we show not only how to protect your brand from counterfeiting but also how your efforts to do so can simultaneously reduce organised crime, people trafficking, forced labour, toxic health risks and environmental crimes.

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You’re Gonna Hear Me Roar: Katy Perry Wins Appeal Against Local Australian Fashion Designer

In the long-running trade mark dispute between international popstar Katy Perry and Australian fashion designer Katie Taylor, the Full Federal Court has overturned the first instance decision of Taylor v Killer Queen, LLC (No 5) [2023] FCA 364 and ordered that Taylor’s trade mark be cancelled.

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Influenced by Influencers? Legislative Updates to Illegal Content in the Digital Age

Recent legislative updates have emerged in France, focusing on the intricate balance between national regulation and European Union directives —especially relevant to the evolving sector of commercial influence. The French law no. 2024-356, passed on 22 April 2024 (DADDUE Law), has granted the government a nine-month window to modify previous statutes to align with European standards.

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Levi Strauss Settles Trademark Dispute Over Pocket Tab on Jeans

Levi Strauss continues enforcement of its Tab trademark against other fashion companies. On May 7, 2024, just a couple months after filing suit against Brunello Cucinelli, Levi Strauss voluntarily dismissed its lawsuit. Levi’s filed suit against the Italian luxury fashion brand in the Northern District of California in January 2024 alleging infringement of Levi’s rectangular pocket tab trademark. Levi’s dismissed the suit after reaching a confidential settlement.

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Chanel Seeks Permanent Injunction Against WGACA

The public legal dispute between luxury brand Chanel and luxury reseller What Goes Around Comes Around (WGACA) continues with Chanel seeking a permanent injunction that WGACA argues is too broad. As previously reported, a New York jury previously awarded Chanel a US$4 million verdict against WGACA for sales of counterfeit Chanel-branded products Chanel, Inc. v. What Goes Around Comes Around, LLC, et al., 1:18-cv-02253 (SDNY). 

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Battle of the Bags: UNIQLO Sues SHEIN in Japan Over Viral Handbag Dupe

In January 2024, UNIQLO CO., LTD. (UNIQLO) announced that it had filed a lawsuit before the Tokyo District Court against Roadget Business Pte. Ltd., Fashion Choice Pte. Ltd., and SHEIN Japan Co., Ltd. (collectively, SHEIN Parties). UNIQLO alleges that the SHEIN Parties have infringed Japan’s Unfair Competition Prevention Act by selling dupes of UNIQLO’s popular round mini shoulder bag, which went viral on TikTok last year due to its minimalistic, water-repellent exterior and ability to hold a surprisingly large volume of products for its size. UNIQLO is demanding that the SHEIN parties cease selling the dupe bags and pay damages incurred as a result of sale of the SHEIN Parties’ dupe products.

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Victory for Chanel in Luxury Reseller Trial

A New York federal jury sided in favor of Chanel on all of it claims against luxury reseller What Goes Around Comes Around (WGACA), awarding Chanel US$4 million in statutory damages for sales of counterfeit Chanel-branded handbags. In Chanel, Inc. v. What Goes Around Comes Around, LLC, et al., 1:18-cv-02253 (SDNY), WGACA was found liable for trademark infringement, false association and unfair competition, and false advertising claims. The jury further found that WGACA acted willfully, with reckless disregard, or with willful blindness. 

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Walking the Fine “Broken” Line in Designs

In many jurisdictions, it is customary for claimed features of a design to be depicted in solid lines while disclaimed features of a design are shown in broken lines.

In Australia, unless parts of the product are separable, a design will be read as being the overall article represented and the parts with broken lines are not completely disregarded.

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Up in Arms: Giorgio Armani Wins Trade Mark Battle Over Arman’s Fine Jewellery

Luxury fashion brand Giorgio Armani has successfully prevented jewellery designer “Arman’s Fine Jewellery” from registering four trade marks containing “Arman” for jewellery goods and services.1

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