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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, INTA’s call for more research on illicit trade, Liverpool Football Club embroiled in a dispute, strong start for the ‘.app’ new gTLD, and advice on building a fashion retail brand in 2018.
In a recent decision under the UDRP, a WIPO panel has denied the transfer of a domain name consisting of an identical reproduction of the complainant's trademark followed by the name of the country in which the complainant operated. It found insufficient evidence that the domain name was registered and used in bad faith in order to take advantage of the complainant's rights.
adidas takes anti-counterfeiting fight to Instagram sellers, highlights enforcement challenge faced by brands
In a lawsuit filed last week on behalf of adidas and Reebok International in the US District Court for the Southern District of Florida, the sports brands took aim at 53 sellers of alleged counterfeit goods on social media and e-commerce sites (ie, eBay.com, Bonanza.com, iOffer.com and Instagram.com). For those not yet monitoring the platform, the action provides a reminder that Instagram should be a part of policing strategies.
WHOIS access charges, NGOs take aim at watch list plans and INTA applauds ‘Brand India’: news round-up
Every Tuesday and Friday, World Trademark Review presents a round-up of news, developments and insights from across the trademark sphere. In our latest edition, we look at a registry’s plans to charge trademark owners for access to WHOIS data, the war of words over the European Commission’s plans for an IP markets watch list and a blow for Apple in the Norwegian courts.
With the withdrawal of the United Kingdom from the European Union scheduled to take place on March 30 2019, UK-based owners of '.eu' domain names should take note of the European Commission’s "Notice to stakeholders: withdrawal of the United Kingdom and EU rules on '.eu' domain names". UK-based proprietors of '.eu' domain names should take necessary steps to avoid any negative impact to their domain name portfolio.
WIPO has issued a press release revealing that cybersquatting cases in 2017 reached an all-time high. While the expansion of the domain name system has contributed to an increase in cybersquatting activity, in 2017 disputes relating to new gTLDs represented only 12% of all cases filed with WIPO. As in previous years, ‘.com’ remains the TLD with the highest number of disputed domain names.
The Article 29 Data Protection Working Party has written to ICANN to provide guidance on its proposed interim model for ensuring that the treatment of WHOIS data is compliant with the GDPR. While welcoming ICANN’s efforts to date, it raised a number of concerns with the proposed approach and did not address the request for a moratorium on enforcement.
In an exclusive interview with World Trademark Review, the general manager of IP Australia’s innovation and technology group, Rob Bollard, expands on how the office’s digital transformation will help users and reveals that the organisation is exploring the establishment of a Centre of Excellence to encourage intangible asset lending in Australia.
In a recent decision under the UDRP, a three-member panel not only denied the transfer of the domain name ‘ktg.com’, failing it on all three requirements, but also found reverse domain name hijacking. The case illustrates how difficult it may be, in the absence of any very well-established registered or unregistered trademark rights, to recuperate a valuable three-letter domain name.
Call for more robust online RPMs, Alibabacoin hits back and getting legal advice from a robot: news round-up
In our latest round-up, we look at a trademark infringement lawsuit involving much-loved US TV sitcom I Love Lucy, the experts calling for more robust rights protection mechanisms, how Alibabacoin is hitting back at the Alibaba lawsuit and how the Smiley trademark owner is targeting the Indian market.
“Flat is the new increase”: Adobe’s J Scott Evans on budget management, trademark risks and the future of WHOIS
J Scott Evans has managed brand rights for a number of high-profile, high-tech companies such as Yahoo! and now Adobe Systems as well as serving as the 2015 president of INTA. As part of our ongoing series of interviews with WTR 300-featured corporate trademark counsel, we spoke to him about his work as director of trademark and advertising law at Adobe Systems, as well his thoughts on the challenges created by budget cuts, the importance of risk management, and the future of the WHOIS database.
In National Mini Storage Limited v National Storage Limited, the Court of Appeal appears to have allowed initial interest confusion to occur in search engine results. The court held that when a consumer clicks through to the websites of National Mini Storage or National Storage, any confusion is likely to be dispelled.
This year’s Global Trademark Benchmarking Survey reveals that the online policing burden is intensifying, with new threats adding to the headache experienced by brand protection professionals.
Australian trademark law amendments, WHOIS fears, and EUIPO launches anti-counterfeit prize: news round-up
In our latest round-up, we look the end of a heated legal dispute over an Icelandic chant, fears increase of future WHOIS access, Major League Soccer confirms it won’t trademark the name of a Los Angeles team rivalry, and the Australian government has published a draft version of an IP law amendment bill.
For companies considering applying for a ‘.brand’ in the next application window, analysis of current ‘.brand’ use provides invaluable insight.
As debates over authenticity and privacy heat up and it becomes ever-more challenging to navigate the ethics, a new role for ‘.brand’ top-level domains is emerging.
In this guest blog, Brian J Winterfeldt, principal of the Winterfeldt IP Group and president of ICANN’s Intellectual Property Constituency, provides an update on discussions at the recent ICANN meeting in San Juan, at which the spectre of a WHOIS blackout loomed large. It is a long read but an important one, in which he also outlines the practical actions that rights holders can and should take now in an effort to prevent the worst case scenario (if it isn’t already too late).
Kanye trademark battle labelled “fake news”, effective banking brands, and ‘.app’ gTLD sunrise: news round-up
In our latest round-up, we look at Canada being criticised for how it tackles counterfeits, the USPTO announcing the exhibitors for its upcoming National Trademark Expo event, research into what makes a more effective digital banking brand, and the launch of the ‘.app’ new gTLD.
Which courts have jurisdiction over claim for online infringement of EUTM? Court of Appeal seeks guidance from ECJ
In AMS Neve Limited v Heritage Audio SL, the Court of Appeal has considered the issue of which member state's courts would have jurisdiction to hear a claim for infringement of an EU trademark where an online advertisement created in one member state bearing the infringing mark targeted consumers in another member state. The Court of Appeal concluded that it was necessary to make a reference to the ECJ.
dotFM is to join the handful of TLDs that are making emoji domain names available to register. The registry has released a list of emoji domain names for which it is inviting pre-launch "expressions of interest". Despite the popular appeal of emoji, the ICANN Security and Stability Advisory Committee had advised against their suitability as domain names in a 2015 report, leading ICANN to ban their use in gTLDs.
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