Europe

In-house perspectives on diversity in the trademark industry: “All of us in this field need to do more”

The theme of today’s World IP Day is ‘Powering change: Women in innovation and creativity’. In the first of a two-part piece, corporate trademark professionals reflect on the topic of the day.

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Kit Kat blow, Comey trademark abandoned, and Russian IP office pledges blockchain support: news round-up

In our latest round-up, we look at the Advocate General’s latest Kit Kat decision, Liverpool FC embroiled in a dispute, a strong start for the ‘.app’ new gTLD, advice on building a fashion retail brand in 2018, and much...

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Expedited examination at Rospatent 2.0: benefits and challenges for brand owners

While the new timeframe for the expedited examination of trademarks in Russia provides significant benefits for applicants, it also creates challenges for brand owners wishing to block applications at examination stage.

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United States slides, Germany continues to rule: counsel rate court systems across the globe

Despite being key litigation battlegrounds, counsel confidence in the court systems of China and the United States remains shaky.

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Customs concerns: counsel identify significant room for improvement in India, Iran and Turkey

Trademark counsel have had their say on the efficiency of customs authorities across the globe – with some of the largest importers of counterfeit goods giving cause for continued concern.

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Cut in protection: leading chainsaw manufacturer loses rights to colour mark

In Giro Travel Company v Andreas Stihl AG, the Second Board of Appeal of the EUIPO has found that a colour mark consisting of the colours orange and grey for chainsaws was invalid.

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Birkenstock unsuccessful on appeal: 'patterned sole' mark held invalid

The appointed person has upheld a decision of the hearing officer finding that Birkenstock's ‘patterned sole’ UK trademark was invalid for lack of distinctiveness.

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Court of Appeals: target consumers' level of attention rules out likelihood of confusion

In a landmark decision, the Turkish Court of Appeals has held that the level of attention of the target consumers plays a significant role in the assessment of the likelihood of confusion.

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Court finds no likelihood of confusion between SIGNIFOR and SIGNASOL in questionable decision

The Swiss Federal Administrative Court has held that there was no likelihood of confusion between the trademarks SIGNIFOR and SIGNASOL for pharmaceutical preparations in Class 5.

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Procedures and strategies for pharmaceutical brands: France

In order for a pharmaceutical trademark to be registered, no prior authorisation is needed per se. Unlike in other countries, in France the trademark owner is independent from the party exploiting the trademark and need not possess a particular quality.

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Procedures and strategies for pharmaceutical brands: Serbia

The requirements for registration of pharmaceutical trademarks are the same as for any trademark: a request for registration in the prescribed form, including a representation of the sign and a list of goods covered, along with the payment of a fee.

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Procedures and strategies for pharmaceutical brands: Norway

Developing and protecting new pharmaceutical product names in Norway is a complex task, requiring experience and know-how at all stages of the process. This chapter outlines key issues to be considered when choosing a new pharmaceutical trademark in Norway.

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Procedures and strategies for pharmaceutical brands: United Kingdom

To minimise the risk of counterfeit medicines reaching consumers, the Medicines and Healthcare Products Regulatory Agency licenses all steps of the medicine distribution system and monitors the supply and manufacture of medical devices.

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Trump, Brexit and Korean reunification: the political issues weighing on the minds of trademark practitioners

​​​​​​​Research from World Trademark Review reveals the political issues that counsel say could significantly impact enforcement efforts, both now and in the future.

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Trademark offices prepare for the future as users give poor performance grades

The performance levels of the Chinese, Brazilian and Indian trademark offices have clear room for improvement but change could be afoot.

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BARCELONA collective mark rejected, battle for Prudential name and Philippines fakes crackdown: news round-up

In our latest round-up, we look at the Philippines government pledging to crackdown on counterfeit goods, a national IP office’s anti-fakes video featuring a naked man atop a tortoise, and much more.

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Trademark associations join forces, publish Brexit wishlist calling for “maximum transparency”

​​​​​​​A number of industry associations – including INTA, CITMA, ECTA and MARQUES – have teamed up to publish a joint statement on the Brexit negotiations.

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With a fast-improving IP office and flourishing brands, Italy’s outlook is bright: exclusive data analysis

Our latest country data report focuses on the branding landscape of Italy. We explore key filing data and the performance of the leading Italian brands, revealing that their total brand value has increased at a quicker...

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WHOIS access charges, NGOs take aim at watch list plans and INTA applauds ‘Brand India’: news round-up

In our latest round-up, we look at a registry’s plans to charge trademark owners for access to WHOIS data and the war of words over plans for an IP markets watch list.

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Advocate general considers use of trademarks in calls for tenders

The EU advocate general has given his opinion in VAR v Iveco. Although the case concerned the interpretation of Directive 2004/17 on public procurement, the entire case rests on a trademark issue.

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“No surprise” – significant gender pay gap reported at UK law firms with highly rated trademark practices

​​​​​​​World Trademark Review can reveal that UK law firms with highly ranked trademark practices pay women an hourly rate that is, on average, 28.7% lower than male colleagues. One industry expert says there is “much...

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SARAY POPPY decision: a new approach to likelihood of confusion and vested rights?

The Turkish Court of Appeal has upheld the striking decision of the Civil IP Court in the SARAY POPPY case, finding 'pop' and 'poppy' to be similar, even though they are generic.

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General Court: relevant public's perception of mark on filing date is crucial to assess absolute grounds for refusal

The EU General Court's decision in Safe Skies v EUIPO shows that the perception of a mark by the relevant public on the filing date of the application is crucial for the assessment of absolute grounds for...

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Gleissner-related application for ALEXANDER filed in bad faith

An application for UK trademark ALEXANDER has been refused on grounds of bad faith; the decision shows that the wider conduct of the applicant could be relevant to the assessment of whether an application was filed in bad faith.

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'Skyr' found to be descriptive of dairy products; opposition against SKYR BALTAIS rejected

The Estonian Board of Appeal has found that the figurative marks SKYR and SKYR BALTAIS in Class 29 were not similar, as the word ‘Skyr’ has meaning for Estonian consumers.

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Attorney urges businesses to “stand firm and plead bad faith” in Gleissner oppositions

An attorney who recently prevailed in an opposition against Michael Gleissner-linked trademark application explains why he worked the case “for the good of the system rather than profits”.

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Protecting the TARDIS: exclusive insight into BBC Worldwide’s brand protection strategies

​​​​​​​For the second in our series of exclusive interviews, Diane Hamer of BBC Worldwide expands on the company’s efforts to guard against genericide and the challenges managing a brand as beloved as Doctor Who.

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Jamaica approves protection of GIs, Montenegro joins TMView and United Kingdom ratifies Hague Agreement: news round-up

In today's round-up, we look predictions for the next round of gTLDs, the UK’s IP Crime Unit urging the public to “treat mum right” by avoiding fakes, and much more.

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Managing a pharmaceutical trademark portfolio with the assistance of outside counsel

Responsibility for a company’s portfolio is frequently placed in the hands of a few specialists. Often, this is not the only task carried out within the department. However, the legal protection of trademarks requires a high degree of specialisation...

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Advertising Standards Authority ruling could have far-reaching implications for UK trademark law firm marketing

​​​​​​​The UK’s Advertising Standards Authority has ruled that Trade Mark Direct cannot claim to be the country’s ‘leading’ or ‘number one’ trademark firm. The decision could lead to a major shift in how firms...

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US Customs head confirmed, Latvia trims WHOIS data and trademark offers Cambridge Analytica clues: news round-up

In our latest round-up, we look at how a trademark scammer has rebranded, how a trademark may offer clues on the company that has hit headlines across the world, Cambridge Analytica, and much more.

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A beer coloured trademark, Changsha IP court opens, and Kosovo registry launches digital database: news round-up

In today’s edition, we look at the European Commission stepping up its battle against illegal online content, a new IP court in China, and controversy in Australia over a trademark application for a football...

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No Brexit talk between IP offices, Scooby Doo infringement and Syria establishes trademark court: news round-up

In the latest round-up, we look the latest IP case data from Saudi Arabia, the establishment of a trademark court in Syria, and warnings over counterfeit security certificates.

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Issue 72