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Gabriella S. Paglieri, Carlton Fields, USA
First published on WTR Daily, part of World Trademark Review, in June 2017

GOOGLE Trademark Has Not Become Generic

Gabriella S. Paglieri, Carlton Fields, USA, First published on WTR Daily, part of World Trademark Review, in June 2017In Elliott v Google, Inc, 15-15809, 2012 WL 2112311 (May 16 2017) the Ninth Circuit upheld a district court’s decision not to cancel the GOOGLE trademark, rejecting a claim that it had become generic.
The plaintiffs were two businessmen who had purchased 763 domain names that included the term ‘google’ accompanied by a specific search term such as ‘’. Google obtained ownership of the domain names through an administrative action, claiming that the
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Suzanne Antal, Joli-Cœur Lacasse Avocats, Canada
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Canada’s proposed Trademark Regulations

Suzanne Antal, Joli-Cœur Lacasse Avocats, CanadaOn June 19, 2017, the Canadian Intellectual Property Office (CIPO) released its draft Regulations under Canada’s new Trademarks Act. Regulations are the rules used to carry out the intent of the Act and are approved by the Federal Cabinet. Typically, regulations contain more specific rules than Acts. The draft Regulations are open to public comment until July 21, 2017. This is the next step leading up to the enactment of the amended Trademarks Act, which is expected to occur in 2019. The proposed amendments to the  read more

Paul Ranjard, Wan Hui Da Law Firm, China
First published on

Likelihood of confusion and dilution clarified by the S...

Paul Ranjard, Wan Hui Da Law Firm, China, First published on www.internationallawoffice.comIn China, the Supreme People's Court proactively interprets the laws. It does so through exhaustive and detailed documents published under various titles, and at various levels, which serve as guidance for the lower courts. "Interpretation" and "Provisions" are the highest level and lower courts are required to follow them. "Explanation" or "Opinion", are of lesser importance and not binding, but they still have a strong influence on the practice of lower courts. Concerning the Trademark Law, the SPC usually makes a distinction between  read more

Özlem Fütman, Ofo Ventura, Turkey
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You use your Mark in Turkey, but can you correctly prov...

Özlem Fütman, Ofo Ventura, TurkeyAs many of you are aware of, since 10 January 2017 Turkey has a New IP Law (Number 6769) in force. One of the most important points in the New Law regards opposition proceedings. The Applicant now has the right to request their Opponent(s) to prove serious and genuine use of its mark in Turkey in the last 5 years or submit justified reasons thereof, if the Opponent’s mark passed the 5 years use term on the filing/priority date of opposed mark. If such use cannot be proven, then the opposition would be read more

Manon Alexandre, Inlex IP Expertise, France
Sabrina Florindo, Inlex IP Expertise, France
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Three and two-dimensional trademarks: They are fighting...

Manon Alexandre, Inlex IP Expertise, France, Sabrina Florindo, Inlex IP Expertise, FranceThe Seventh Chamber of the Court of Justice of the European Union recalled, on May 4, 2017, in the decision AUGUST STORCK KG vs. EUIPO (C-417/16P), that precedents regarding criteria for assessing the distinctive character of three-dimensional trademarks consisting of the shape of the product itself, also apply in respect of device trademarks consisting of the two-dimensional representation of the product.
On August 1, 2013, AUGUST STORCK KG filed an international trademark application designating the European Union consisting in a figurative sign representing a square-shaped packaging, with a white wave over blue font and grey edges, for goods in class 30. On August 14, 2013, the European Office, considering that the sign at stake was not sufficiently distinctive, issued a provisional total refusal of protection. This decision was upheld by the Examination Division. Then, the Board of Appeal also considered that
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Sophie Davies, HSM IP, Cayman Island
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New Cayman Islands Trade Marks and Designs Laws Will Be...

Sophie Davies, HSM IP, Cayman IslandThe Trade Marks Law, 2016, the Design Rights Registration Law, 2016 and the Patents and Trade Marks (Amendment) Law, 2016, which were passed late 2016, will be implemented in the Cayman Islands on 1 August 2017. The practice of re-registering UK and EU trade mark registrations to the Cayman Islands will end on 31 July 2017. As of 1 August 2017, the Cayman Islands Intellectual Property Office (CIIPO) will only accept national Cayman Islands applications, filed by a registered agent in the Cayman Islands. No power of  read more

Edward F. Maluf, Seyfarth Shaw LLP, USA
Brian L. Michaelis, Seyfarth Shaw LLP, USA
Kenneth L. Wilton, Seyfarth Shaw LLP, USA

How Not to Prove a Mark is Generic. Use of GOOGLE as a ...

Edward F. Maluf, Seyfarth Shaw LLP, USA , Brian L. Michaelis, Seyfarth Shaw LLP, USA , Kenneth L. Wilton, Seyfarth Shaw LLP, USA The Ninth Circuit Court of Appeals explained recently in Elliot v. Google that use of the GOOGLE trademark as a verb, “e.g. google it,” does not alone cause the mark to become generic. The question presented was whether the public’s use of “google” as a verb referred to the Google search engine, or whether it was directed more generally to the covered goods or services, i.e. search engines. In affirming a grant of summary judgment in Google’s favor, the Court emphasized the necessary and inherent link between genericide and a particular type of good or service and that trademarks can be used in forms other than adjectives without being rendered generic.
Plaintiffs relied on their argument that verb use constitutes generic use as a matter of law and therefore the lower court’s ruling in Google’s favor was inappropriate. The Court, however, disagreed with this proposition, focusing on two points that Plaintiffs failed to recognize: first, that a claim for genericide “must always” relate to a particular type of good or service; and second, that
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Joli-Coeur Lacasse Avocats

Micheline Dessureault

Micheline Dessureault
1134 Grande-Allée Est, suite 600
G1S 1N5 Québec (Québec)
Canada (CA)
Tel +1 418 681 7007
Fax +1 418 681 7100

Founded in 1983, our firm has expanded considerably since its creation, placing it amongst one of the most important law firms in the province of Quebec, Canada.

Counting almost 100 lawyers, our firm has offices in Quebec City, Trois-Rivières and Montreal and has, amongst others, departments in intellectual property, international business law, business law, taxation, real estate law and insolvency and enforcement of security.

It is known for both the quality and affordability its legal services. Our accomplishments are in large part due to the competent, creative and service-oriented professionals who lend their hand to helping their clients and strive to go above and beyond demand.

Our team of professionals in the intellectual property area is renowned for its services and publications as well as for its conferences and seminars. Its members, whether they are lawyers, trademark agents or technicians, have a strong experience in Canada as in foreign countries. Counting on a sound network of contacts throughout the world, they are fit to assist you on intellectual property matters.

Our spheres of activity in Intellectual Property:
- Protection and management of intellectual property portfolios
- Trademarks
- Copyright
- Information technologies and Internet Law
- Patents and industrial designs
- Know-how
- Artistic heritage
- Licenses/technology transfer
- Research and development

Our services in International Business Law:
- Business accompaniment
- Legal and political analysis
- Creation of a subsidiary or branch
- Mergers and acquisitions
- Strategic alliances and partnerships
- Commercial agencies/sales offices
- Distribution
- Joint venture and co-development
- Exportation and importation
- Legal domiciliation
- National and international taxation
- Real estate
- Negotiation and drafting of various other international contracts
- Transnational dispute settlement, mediation, arbitration

We invite you to visit our website for further information regarding our firm and its specialists.

Micheline Dessureault, Lawyer and Trademark Agent, Director of the Intellectual Property and International Business Law Departments

Suzanne Antal, Trademark Agent, Assistant Director - Trademarks

Ofo Ventura


Halaskargazi CD, No 150/2
34371 Istanbul
Turkey (TR)
Tel + 90 212 219 67 33
Fax + 90 212 234 17 09

Inlex IP Expertise

Mr Franck Soutoul

Mr Franck Soutoul
5, Rue Feydeau
75002 Paris
France (FR)
Tel +33 (0) 1 5659 7090
Fax +33 (0) 1 5659 7091

INLEX IP Expertise is an Intellectual Property law firm specialized in the validation, protection, defense and valorization of projects for the creation of trademarks, designs, copyrights and commercial and marketing concepts.
Created in 1995 by Franck Soutoul and Eric Schahl, the firm employs 75 people and is now present in Europe - France (7 agencies), Monaco and Africa (3 agencies : Morocco, Cameroon & Mauritius).

Being registered representatives in France, Monaco, OAPI, the European Union (EUIPO) and in the World Intellectual Property Organization (WIPO) we are entitled to act at the international level and our network of the trusted experts enable us to carry out the following actions:
- Trademark availability searches
- Registration and renewal of trademarks, designs and domain names
- Monitoring of trademarks, designs, domain names, websites and references in search engines
- Opposition to the registration
- Administrative complaints
- Seizure procedures in infringement cases.



68 Fort Street, George Town
KY1-1207 Grand Cayman
Cayman Islands (KY)
Tel +1 345 949 4766
Fax +1 345 946 8825

HSM IP Ltd. provides worldwide intellectual property services. Based in the Cayman Islands and independently owned and operated, our experienced team of attorneys and paralegals deliver first class service to a broad client base which includes major Fortune Global 500 brand owners, international law firms and other specialist IP practices. Our broad perspective, practical approach and international experience allow us to offer clients a unique insight into IP issues internationally. The success and growth of our firm is due to our keen understanding of our clients’ needs for a comprehenisve “one-stop shop” which encompasses a wide range of services from the initial consultation process to searches, registrations, annuity payments and monitoring and renewals. We offer a competitive schedule of fixed fees, inclusive of both disbursements and official fees, which means we can provide clients with an accurate estimate of their project costs before embarking on a global filing programme for their portfolio. We have a wealth of knowledge and specialise in the Caribbean, Central and Latin America and other off shore jurisdictions. Our staff regularly contribute to leading IP publications and we also publish a range of country-specific IP Client Guides which are available on our website.