Europe

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EUIPO revealed as world's most innovative IP office, but other registries are catching up

In the conclusion of our four-part series, World Trademark Review unveils the full IP Office Innovation Ranking, analyses the key findings from this year's project, and looks to the future.

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Brexit update, plain packaging begins in Ireland, and first trademark ruling in Barbados: news round-up

In this round-up edition, we look at the latest Brexit developments from a trademark perspective, Hershey’s hawkish eye over the marijuana industry, and the result from the first ever trademark dispute in Barbados.

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Sweden considering prison for infringers, EUIPO switches banks and cops brandishing fake firearms: news round-up

In our latest round-up, we look the Qatari government continuing its counterfeit crackdown, a cheese stand-off between the EU and Mexico, and much more.

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Pushing the boundaries – identifying the world’s most innovative IP offices

In a new multi-part series, World Trademark Review identifies the IP offices leading the way in offering innovative non-core tools and services – and the registries trailing behind.

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France’s burgeoning tech sector could overtake UK, but filings remain flat: exclusive data analysis

In this week’s country data report, World Trademark Review inspects the trademark landscape in France. We delve into the country’s filing trends and analyse how its leading brands have performed in recent years.

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General Court confirms likelihood of confusion between 'jumping cats' marks

In Arctic Cat v EUIPO, the General Court has upheld a decision of the Fifth Board of Appeal of the EUIPO finding that there was a likelihood of confusion between two figurative trademarks representing a jumping wild cat for goods in Class 25.

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JOY fails to prevent registration of HISPANITAS JOY IS A CHOICE despite enhanced distinctive character

In Jean Patou Worldwide v EUIPO, the General Court has confirmed that there was no likelihood of confusion between the figurative mark HISPANITAS JOY IS A CHOICE and the earlier mark JOY for “perfumes” in Class 3.

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ECJ: no time limit for production of evidence in invalidation proceedings based on absolute grounds

In EUIPO v European Food, the ECJ found that there are no time limits for the production of evidence in the context of an application for a declaration of invalidity based on absolute grounds.

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New circular improves customs protection of IP rights; number of suspensions increases considerably

A new circular, published by the Ministry of Customs and Trade to remedy a gap in the system for the protection of IP rights by Customs, has allowed right holders to combat counterfeiting more effectively.

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Diesel’s ‘Go with the Fake’ campaign goes viral; does it undermine the value of authentic products?

Fashion brand Diesel has opened a pop-up store in New York selling so-called ‘fake fakes’. The move encourages consumers to “wear whatever they want”, leading some to wonder whether it glorifies counterfeit goods.

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Pharma brands warned not to be ‘trademark bullies’, Turkey on top, and world’s oldest mark: news round-up

We look at Turkey moving to the top of the European trademark filing league, Activision prevailing in a lawsuit in China, and a warning to pharma brands.

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ECJ’s Coty decision a major win for luxury brands but question marks remain for other sectors

The European Court of Justice handed down its much-anticipated Coty judgment this week, ruling that brand owners may restrict the online sales of their products through third-party platforms.

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European Commission unveils plans for IP Market Watch List, a major new tool in the fight against fakes

​​​​​​​The European Commission has presented a series of measures designed to ensure that IP rights are better protected, in a bid to spur innovation and creativity in EU-based companies.

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Spreading the message – the IP offices taking significant strides to engage with the public about trademarks

In the third part of our series tracking IP office innovation, we take a deep dive into how registries are spreading the trademark message to a wider audience.

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Online trailblazers – the IP offices breaking new ground in digital services, and those falling behind

In the second of our four-part series on IP office innovation, we take a look at digital tools and services. We reveal the registries leading the way in areas including website functionality, e-filings and open data access...

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ECJ overturns outsourcing procurement by EUIPO

The ECJ has overturned an outsourcing procurement by the EUIPO, although the latter avoided having to pay damages to a disappointed bidder.

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“There are no shortcuts” – study claims free trademark tools could be reason for rise in infringement

​​​​​​​A new study finds that a majority of trademark practitioners rely on free search tools when clearing marks, with a further claim that this may have led to more infringement.

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“Cybercriminals could be the biggest fans of GDPR”: new warning over WHOIS policy

An industry expert warns that cybercriminals “anywhere in the world” could become fans of the European Union's GDPR legislation. For that reason, he urges stakeholders to be aware of the substance of the law's protections.

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Use of emblem for GIs and traditional products now mandatory

Following the entry into force of a new regulation on January 10 2018, it is now mandatory to use an emblem on products protected by GIs and on traditional products.

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“UK and China will not always see eye-to-eye” – British prime minister warns China over fake goods

The prime minister of the United Kingdom, Theresa May, has fired a warning shot to China’s government over the need to respect the rule of international trade – especially around counterfeit goods.

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IP firm announces Dublin office due to “uncertainty of Brexit” as negotiations on intellectual property begin

​​​​​​​A UK-based IP law firm has chosen to open a new office in Dublin rather than London due to “the uncertainty of Brexit”, as negotiators in Brussels begin talks about intellectual property.

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Logan Paul fiasco shows risk for brands on YouTube; research reveals more YouTubers seeking trademark protection

Recent incidents have demonstrated why brands must be careful when advertising on YouTube. New research also reveals that YouTube's content creators are increasingly obtaining registered trademark protection.

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General Court confirms rejection of FACK JU GÖHTE; rare application of Article 7(1)(f)

In Constantin Film Produktion GmbH v EUIPO, the General Court has upheld a decision of the EUIPO rejecting an application for the mark FACK JU GÖHTE for a wide range of goods and services under Article 7(1)(f) of Regulation 207/2009.

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General Court follows holistic approach to evidence of use; dangers of Article 128(7) highlighted

In Deichmann v EUIPO, the General Court has confirmed that there had been genuine use of a figurative mark for sports shoes, even though the mark as used was not identical to the mark as registered.

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General Court's METAPORN decision: why adult entertainment and telecommunication services are similar

In Sun Media Ltd v EUIPO, the General Court has confirmed that there was a likelihood of confusion between the mark METAPORN and earlier META4 marks.

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"Infamous troll" Michael Gleissner involved in 5% of all live contested trademark cases in United Kingdom

UKIPO reveals that entities related to Michael Gleissner account for 5% of all live contested trademark cases in the United Kingdom – demonstrating the unprecedented volume of the millionaire’s filing activity.

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CITMA calls for clarity and action from UK government to protect IP business following Brexit

The Chartered Institute of Trademark Attorneys has published a new report which identifies the impact that Brexit could have on UK businesses and the legal profession in relation to IP rights.

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With Black Friday in full swing, exclusive research reveals brand protection gaps in new gTLDs

While consumers enjoy the low prices offered on Black Friday, the sales period is a significant challenge for trademark practitioners – especially for protecting shoppers from online scams.

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Germany’s hearty trademark scene and stunning courtroom win rates: exclusive data analysis

The latest country data report focuses on Germany. We reveal the European powerhouse’s leading sectors and explain how the country’s robust brands have continued to surge in value.

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IP organisations team up to push Brexit agenda; transition predicted to take “several years”

​​​​​​​Bodies representing IP solicitors, barristers and chartered trademark and patent attorneys have teamed up to urge the UK government to address key IP concerns related to Brexit urgently.

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As Marks & Clerk battles copycat site, new data uncovers prolific rise of Chinese filers at the UKIPO

World Trademark Review has learned of a prolific filer at the UK Intellectual Property Office, operating under the name Champion Intellectual Property Management, which has copied the website of Marks & Clerk.

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“The Emperor is naked”: trademark attorney urges rethink on law firm litigation costs in the United Kingdom

Trademark attorney and founder of law firm Wood IP, Aaron Wood, has written a scathing critique on the cost of IP litigation in the United Kingdom and the high fees being charged by law firms.

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From the EUIPO to the EPO: Campinos elected next president as race to Alicante top spot commences

António Campinos, executive director of the EUIPO, has been elected as the next president of the EPO. He will serve a five-year term from July 1 2018.

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Issue 71