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Legal updates

Arbitrability of trademark and copyright disputes
In a landmark decision in Eros International v Telemax Links the Bombay High Court has held that trademark and copyright infringements arising out of a contract containing an arbitration clause constitute an arbitrable dispute which must be referred to the decision of the arbitrator as the civil courts will not entertain such disputes.
Surprising trademark registration granted for purple and orange
In Discount Drugstores Pty Ltd v Registrar of Trademarks Discount Drugstores has succeeded in its appeal to the Federal Court of Australia concerning the registrability of the colours purple and orange in relation to pharmacy services. The case is unusual both in the way it was decided and the broad scope of protection afforded to the company.
United States
Timing of the mark-fame inquiry under US dilution statute
The federal Lanham Act protects the distinctiveness of a famous mark against likely dilution, but the statute’s protection is available only against a defendant which began using the mark after the plaintiff’s mark had become famous. A hard line has historically been given towards this requirement, but this was taken one step further in Omega SA (Omega AG) (Omega Ltd) v Alpha Phi Omega.


31 May 2016
Trademarkia and others react to Alibaba’s potential entry into trademark registration world
Alibaba Group is poised to enter the market for trademark filing services through the launch of a platform called Chuangxin Bao. The relative lack of fanfare for the launch suggests a low-key start for the offering, but conversations at last week’s INTA Annual Meeting in Orlando suggest that those in the trademark industry, both inside and outside China, are watching closely.
27 May 2016
Trademark suits down as research reveals most litigious companies (and the firms that represent them)
New data from Lex Machina has highlighted a fall in trademark litigation filings in the US, with case numbers in the first quarter of this year at a seven-year low. If this trend continues, it will ring alarm bells in law firms that rely on contentious work for their revenue streams.
26 May 2016
Lessons from the José Mourinho trademark tussle with Chelsea
It has been reported that the delay in announcing José Mourinho as the new Manchester United manager is partly down to trademark negotiations with his previous club Chelsea. While extremely unlikely to scupper his appointment, the development provides a useful lesson on the management of personal brands.

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Website blocking and anti-counterfeiting – new weapon or flash in the pan?

Originally developed to target internet service providers hosting websites with pirated content, website blocking orders have occasionally been applied to websites selling counterfeit goods. Could they be a powerful new weapon for brand owners?

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May 31

'.sucks' CEO talks to us about his #INTA16 experience: "I haven’t been accused of extortion in quite a few months."

May 31

We hear the IP Office of Singapore is considering a smartphone app to file trademark applications. Your reaction?

May 31

The winners from last week's WTR Industry Awards; our celebration of in-house excellence.



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Upcoming event

IPBC Global 2016

June 6-7 2016 – Barcelona, Spain

Devised for an audience of senior IP business leaders, the programme for IPBC Global 2016 reflects the challenges posed by a rapidly evolving global IP market. 

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Industry awards

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The WTR Industry Awards recognise the work carried out by in-house trademark counsel, and identify those teams and individuals that are performing to the highest level.

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