As 2020 US presidential race kicks off, few candidates are seeking trademark protection

Research from WTR finds few candidates for the 2020 US Presidential Election are so far seeking registered trademark protection for their campaign branding – although some are already being targeted by infringement.

As 2020 US presidential race kicks off, few candidates are seeking trademark protection
22 Mar 2019

Honeywell drops ‘.brand’, Canada joins Madrid, and IACC cracks down on iOffer: news digest

In our latest news digest, we look at Disney powering up its brand with its 21st Century Fox acquisition, Chinese supermarkets removing fake Starbucks items from shelves, a football club losing a trademark fight, and much more.

22 Mar 2019

How Mastercard is adapting to the digital era and going sonic – exclusive interview

Even widely known and well-established companies must continuously adapt their brand strategies to suit the changing technological and commercial environment. This is a key concern at Mastercard, whose head of intellectual property Colm Dobbyn and senior IP counsel Francesca Silverman spoke to WTR this week.

Featured

22 Mar
2019

Review your IP arrangements: IP exemption from competition laws soon to be repealed

Section 51(3) of the Australian Competition and Consumer Act, which exempts conditional licensing or assignment of IP rights from most of the prohibitions on cartel conduct, is due to be repealed. Businesses are strongly urged to review their IP arrangements to ensure that they comply with the competition laws. Read more

22 Mar
2019

General Court upholds rejection of STREAMS trademark application

In DeepMind Technologies Ltd v EUIPO, the EU General Court has confirmed that the mark STREAMS was descriptive of goods and services in Classes 9 and 42 and should be refused under Article 7(1)(c) of EU Regulation 207/2009.  Read more

21 Mar
2019

UDRP: be aware of generic terms

A recent decision under the UDRP highlights that having a trademark, by itself, does not necessarily mean that the trademark holder will succeed in obtaining the transfer of a domain name, even if it identically reproduces such trademark. Read more

News

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21 Mar 2019

From K-pop to Presley: inside the trademark portfolios of the music industry’s biggest names

When it comes to trademarks, some musicians are clearly a step ahead. For others, the need to consider protection provides a potential new client base for practitioners. We delve into the portfolios and filing trends of both global and local recording artists. Read more

20 Mar 2019

“A game changer” – Nigeria trademark environment improves following release of opposition compendium

Nigeria’s IP office is releasing its first-ever compendium of oppositions rulings, which one local practitioner tells WTR will ensure local and international brand owners have sufficient precedent for trademark-related actions. Read more

19 Mar 2019

INTA backs proposed USPTO rule change as details of attorney identity thefts emerge

INTA has come out in support of the USPTO’s proposed change to representation rules, as another US registered attorney warns over “many examples of identity theft in China” targeting practitioners. Read more

19 Mar 2019

Louis Vuitton victory, Apple Pencil confusion, and brand loyalty declining: news digest

In our latest edition, we look at a call for post-Brexit partnerships to combat fakes, looking ahead to the WIPO elections, the IP Office of the Philippines seeking to regulate Facebook sellers, and much more. Read more

Analysis

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21 Mar 2019

European Union to accede to Geneva Act; Brexit uncertainty means United Kingdom poised to become GI battleground

The European Parliament's Legal Affairs Committee has endorsed the European Union acceding to the Geneva Act – a move that could propel the issue of geographical indications back to the top of the trade deal agenda as the United Kingdom looks to its post-Brexit future.   Read more

18 Mar 2019

EUIPO calls for action as study finds fakes make up 3.3% of global trade

A new study from the EUIPO and the OECD has revealed the staggering rise in counterfeit goods being traded around the globe. In response, the executive director of the EUIPO has called for coordinated action. Read more

15 Mar 2019

Plain packaging is a trademark issue, not a tobacco issue – exclusive interview with JT International

Ronald van Tuijl of JT International explains to WTR the distinctive set of trademark challenges that his team faces, what he looks for when enlisting law firms, how plain packaging is affecting his practice, and more. Read more

15 Mar 2019

What Turkey’s domestic economic difficulties mean for brands and their advisers 

Political and economic circumstances have made it difficult for domestic brands to build value, which could prove to be a setback for future growth. However, this could also create opportunities for law firm practitioners. Read more

Legal updates

21 Mar 2019

General Court: consumers perceive signs as a whole

The EU General Court has dismissed an appeal of the Fifth Board of Appeals’ decision concerning the EU mark VERA GREEN and earlier LAVERA marks. The court held that consumers generally perceive signs as a whole and do not analyse their various details. Read more

20 Mar 2019

Patent Office rejects WHEN IN ICELAND opposition

A recent Icelandic Patent Office decision serves as a useful reminder that the evaluation of similarity as set out in the Trademarks Act should always involve a nuanced comparison of the marks. Read more

20 Mar 2019

Philip Morris protects IQOS with registered Community design

In a powerful blow to a Chinese competitor, Philip Morris has deployed its registered Community design (RCD) in order to block the sale of a heated tobacco device, obtaining interim pan-EU injunctive relief from the UK court. The case shows that, in the right circumstances, an RCD can be used to obtain pan-EU injunctive relief on an urgent basis and is therefore an effective weapon for tackling look-a-like products. Read more

19 Mar 2019

Trademark owner’s fate sealed after finding of fraud on USPTO

The US Court of Appeals for the Eighth Circuit has upheld a ruling that dismissed a trademark owner’s second infringement lawsuit after a finding that the mark at issue was no longer incontestable because of fraud on the USPTO. This decision could end the 20-year dispute between the two brands. Read more

19 Mar 2019

‘Funtime’ is over for Trespass

The Intellectual Property Enterprise Court has held that Luen Fat Metal & Plastic Manufactory Co Limited’s UK and EU trademarks for a series of word marks (FUNTIME, FUN TIME and FUN-TIME) are valid and have been infringed. Read more

Insight

8 Feb 2019

How Mickey Mouse and Darth Vader are helping to grow the Disney brand empire

In this week's data focus, we look at how multi-media giant Disney is stockpiling recognisable brands to build out its business operations and adapt to a changing industry. Read more

29 Jan 2019

Litigating design disputes: United States

Parties to unfair competition and trademark infringement cases pending before a court, or in proceedings before the TTAB, have the option to participate in alternative dispute resolution procedures, such as arbitration or mediation.  Read more

29 Jan 2019

Litigation procedures and strategies: United Kingdom

All parties conducting civil litigation in the United Kingdom should follow the Civil Procedure Rules, which set out how cases should be conducted before and after proceedings have been issued. Read more

29 Jan 2019

Litigation procedures and strategies: Turkey

Turkey has no arbitral institutions that specialise in IP disputes. However, it is accepted that, regardless of their nature, trademark disputes that can be settled between the parties may be subject to arbitration. Read more

Events

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16-18 June
2019
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IPBC Global 2019

The leading gathering of global IP decision makers and thought-leaders returns to Boston! As the fourth industrial revolution gathers pace, IPBC Global’s 2019 programme explores the key IP issues this new era of change and innovation presents for corporate leaders, policy makers, investors, the legal profession and third-party service providers.

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