MONTHLY INSIGHTS

I ancu v. Brunetti: U.S. Supreme Court Holds the Lanham Act's Ban on Registration of "Immoral or Scandalous" Trademarks Violates the First Amendment

In Iancu v. Brunetti, 588 U.S. __ (2019), the Supreme Court affirmed the Federal Circuit's decision invalidating the statutory bar on registration for marks considered "immoral or scandalous." The Supreme Court's reasoning was similar to its analysis in Matal v. Tam, 582 U.S. ___ (2017), in which the Supreme Court declared unconstitutional the Lanham Act's ban on registering marks that "disparage" any "person[s], living or dead."



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Major Amendments to China's Trademark Law regarding
Malicious Registration and Trademark Misuse

Malicious trademark squatting and trademark misuse have been significant problems for foreign companies doing business in China. Likewise, even local Chinese companies are being forced into unnecessary litigation or licensing negotiation due to the threats from trademark squatt ers . However, the recent amendments to the Trademark Law of the People's Republic of China ("the Amendments ") made by the Standing Committee of the National People's Congress on April 23, 2019 enacted laws against "bad faith behaviors" involving trademarks.  
Supreme Court Curtails Judicial Deference to Agency Interpretations of Their Own Regulations

Regulations promulgated by administrative agencies sometimes have more than one reasonable interpretation. For example, a regulation may be ambiguous due to circumstances that were not anticipated when the regulation was originally written.  When confronted with an ambiguous regulation, Federal courts accept ("defer to") an agency's interpretation of its own regulations as long as the interpretation is based on a permissible construction of the statute, under the authority of Auer v. Robbins , 519 U.S. 452 (1997) . 
New Graphical User Interface (GUI) Protection in Japan

With the rapid spread of portable devices such as smartphones and tablet terminals in recent years, new protections are needed in Japan for user interface designs and functionality.  In 2016, the Japan Patent Office (JPO) revised the Design Examination Guidelines to clarify that the Design Act protects displayed images necessary for performing functions of articles (corresponding to "manufactured articles" set forth in the U.S. Design Act), and where the images are also stored in the articles. Accordingly, icons in smartphone GUIs became protectable by the Design Act.
U.S. Supreme Court Decision in Mission Product Resolves Issues Surrounding Trademark Agreements Rejected in Bankruptcy


In Mission Product Holdings, Inc. v. Tempnology, LLC, No. 17-1657 (S.Ct. May 20, 2019), the U.S. Supreme Court issued a ruling that will have broad implications for licenses and other agreements in bankruptcy. The Court held that agreements rejected by a debtor in bankruptcy are not terminated. Instead, the non-debtor party retains whatever rights it would have under applicable non-bankruptcy law following a breach of agreement. Specifically, the issue addressed was whether a debtor-licensor's rejection of a contract deprives the licensee of its rights to use the trademark. The Supreme Court held that, in bankruptcy proceedings, trademark licenses are treated as other contracts and licenses and that all rights that would ordinarily survive a contract breach remain in place.


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