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BREAKING: Ban on the registration of “immoral or scandalous” trademarks struck down by US Supreme Court

The US Supreme Court has handed down its highly anticipated ruling in Iancu v Brunetti, holding that The Lanham Act’s prohibition on the registration of “immoral [or] scandalous” trademarks violates the First Amendment.

BREAKING: Ban on the registration of “immoral or scandalous” trademarks struck down by US Supreme Court
24 Jun 2019

Brexhaustion: UKIPO report considers future exhaustion of rights regime outside EU

The UK Intellectual Property Office has released a feasibility study of the options for a post-Brexit IP exhaustion regime. We present the key takeaways from the study.

24 Jun 2019

Survey evidence takeaways: inside the VAGISIL versus VAGISAN dispute

In this exclusive guest post, Anna Naydonov and Douglas Rettew, partners at Finnegan, reveal how they approach survey evidence and present takeaways with respect to survey methodology in §1071(b) Appeals.

Featured

24 Jun
2019

Criminal charges for IP violations: specialised prosecutors send clear message to offenders

During the second half of 2018 and the first half of 2019, specialised prosecutors in Paraguay have increased the amount of charges for offences against IP rights, which sends a clear message that such violations have legal consequences. Read more

24 Jun
2019

Website printout: acceptable specimen of use or advertising?

In In re Siny Corp, the US Court of Appeals for the Federal Circuit has upheld a decision denying registration of the mark CASALANA and finding that the website printout submitted by the applicant as a specimen of use was only advertising.   Read more

22 Jun
2019

Beyond Meat takes market by storm; plant-based applications see a boom in the US

The LA-based start-up has had an impressive post-IPO performance, with traditional manufacturers now starting to react. This activity could make meat alternatives the next brand battleground.   Read more

Most reads

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Beyond Meat takes market by storm; plant-based applications see a boom in the US

2

Beto on trademarks, USPTO warned over cyber risk, and 3M puts brakes on opposition: news digest

3

One week in May: research reveals suspicious specimens still rampant at USPTO

4

Three stripes, you’re out! – adidas loses appeal as EU General Court rules trademark invalid

5

USPTO fraudulent specimens: registry pledges to bolster efforts to tackle improper behaviour

News

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21 Jun 2019

Beto on trademarks, USPTO warned over cyber risk, and 3M puts brakes on opposition: news digest

In our latest edition, we look at Vietnamese IP laws being updated, esports teams seeking out sponsors in Cannes, beauty brands fighting over a make-up mark, an engineer venting over counterfeits, and much more. Read more

19 Jun 2019

Fraudulent specimens at the USPTO: five takeaways from our investigation – share your experience

Five takeaways from our in-depth investigation into suspicious specimens at the USPTO, and we ask readers to share their experience on the topic and any suggestions to help combat the issue. Read more

18 Jun 2019

Marvel battles Wakanda trademark, Sheffield Wednesday IP woes, and most patriotic brands: news digest

In our latest edition, we look at a new warning for trademark solicitation scams, SMEs are increasingly turning to Colombia, the China and Korea IP offices teaming up, a flurry of Trump-themed marks, and much more. Read more

14 Jun 2019

EUIPO enforcement portal, most cyber-attacked brands, and ACG anti-counterfeiting award winners: news digest

In our latest edition, we look at changes to Canadian registrations occurring next week, Unilever seeing a pay-off from purpose-led brands, brands being reminded to renew marks in Rwanda, and much more. Read more

Analysis

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21 Jun 2019

ICANN planning yearly gTLD application windows as second round preparation steps up

ICANN has released a high-level discussion document which lays out plans for the next round of new gTLD applications. In it, the organisation currently envisions a second round followed by annual two-to-three month application opportunities. Read more

20 Jun 2019

Protecting a public participation-based brand: exclusive interview with Guinness World Records

Speaking exclusively to WTR, Raymond Marshall, general counsel for Guinness World Records, reveals how he juggles the family-friendly brand’s reputation and the threat of genericide. Read more

20 Jun 2019

How effective teamwork drives 7-Eleven’s trademark strategy

Alison McDade, senior trademark counsel at 7-Eleven, reveals why communication and integration are key to protecting the IP rights of the world’s largest convenience store franchise. Read more

19 Jun 2019

Three stripes, you’re out! – adidas loses appeal as EU General Court rules trademark invalid

The General Court of the European Union has upheld the decision of the EUIPO to invalidate the trademark registration for adidas’ three-stripe branding. We analyse the decision and look at reaction. Read more

Legal updates

21 Jun 2019

New Ukrainian language law: Ukrainian official language for product labelling and advertising

The new Ukrainian language law, which enters into force on 16 July 2019, will require the use of the Ukrainian language for product labelling and advertising, with the exception of trademarks. Read more

21 Jun 2019

General Court confirms lack of distinctive character of BIOLATTE for dietary supplements

In Biolatte Oy v EUIPO, the EU General Court has upheld a decision of the EUIPO finding that the mark BIOLATTE was devoid of distinctive character for dietary supplements in Class 5. Read more

20 Jun 2019

Drumroll as ‘tambour.com’ complaint is denied

In a recent decision under the UDRP, a panel has denied the transfer of the domain name ‘tambour.com’ because the complainant had failed to demonstrate that the respondent was targeting its trademark TAMBOUR, a descriptive word in some languages. Read more

20 Jun 2019

Model case: invalidation of registered trademark due to forged identification documents

The China National Intellectual Property Administration has recently recognised a decision involving the invalidation of a registered trademark based on forged application documents as a model case for 2018. Read more

19 Jun 2019

Strict similarity test for pharma brands applies to nutraceuticals

In Sun Pharma Laboratories Ltd v Ajanta Pharma Ltd, the Delhi High Court has held that the strict similarity test for pharmaceutical brands set forth in Cadila also applies to nutraceutical brands. Read more

Insight

14 May 2019

Procedures and strategies for anti-counterfeiting: Vietnam

As a part of its World Trade Organisation commitments and its commitments under other trade agreements, Vietnam has introduced a number of laws to better protect IP rights.  In theory, the applicable laws have the highest priority, followed by decrees and circulars. However, in practice, the competent authorities often give higher weight to decrees and circulars as they are usually the most detailed regulations. Read more

14 May 2019

Procedures and strategies for anti-counterfeiting: United States

Grey market goods do not qualify as counterfeit; therefore, distributors and sellers of grey market goods are not subject to criminal penalties. However, rights holders may have other claims against such distributors and sellers based on other intellectual property or contract laws. Read more

14 May 2019

Procedures and strategies for anti-counterfeiting: United Kingdom

While Border Force may seize items suspected of infringing an IP right (including counterfeit, infringing or pirated goods) ex officio, this is quite uncommon (rights holders would still need to submit an ex officio application for action to secure destruction). Border Force will usually seize only such items where a rights holder has a customs application for action in place. Read more

14 May 2019

Procedures and strategies for anti-counterfeiting: Ukraine

No laws or regulations deal specifically with counterfeiting in Ukraine. Thus, this type of infringement is dealt with under the Trademark Law. Although that statute contains no definition of ‘counterfeit goods’, the relevant civil and criminal laws contain blanket provisions referring to the Trademark Law, particularly the definition of ‘use of a trademark’. 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.

Data centre

Research projects tracking the latest market trends for trademark professionals.

Thought leadership

World Trademark Review offers an extensive range of special reports.

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Our unique and timely intelligence service informs commercial trademark decision making in boardrooms globally by translating trademark law into business sense.

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