Incoming trademark data indicates we are on track for a record year

This week we provide our regular update on the extent of the coronavirus’ impact on the trademark ecosystem

Incoming trademark data indicates we are on track for a record year
Sony resolves PS5 trademark fight; Tiffany and LVMH end legal dispute; TPAC new member – news digest
30 Oct 2020

Sony resolves PS5 trademark fight; Tiffany and LVMH end legal dispute; TPAC new member – news digest

In our latest round-up, we look at a ‘Why Brands Matter’ campaign launching, research revealing the brand risk of data breaches, Authentic Vision planning an expansion, and much more.

Live updates: IP offices implement measures in wake of coronavirus crisis
29 Oct 2020

Live updates: IP offices implement measures in wake of coronavirus crisis

As the novel coronavirus epidemic continues to spread across the globe, WTR provides an updated look at measures that national IP offices have launched in response.

Featured

30 Oct
2020

Likelihood of indirect confusion DOME-inates opposition decisions

This decision highlights that a finding of a likelihood of indirect confusion may still arise between marks which are highly similar and contain the same word element, but cover arguably different goods and/or services. Read more

30 Oct
2020

Complaint for ‘kobra.com’ comes back to bite complainant

This case demonstrates a fundamental aspect of the UDRP, in that a complainant must prove that the respondent either knew, or should have known, of the complainant’s trademark at the time it registered the domain name at issue. Read more

29 Oct
2020

Advancing the EU IP agenda in Southeast Asia: interview with IP Key’s Tiago Guerreiro

As the scheme winds down on its four-year strategic plan in Southeast Asia, WTR catches up with project leader Tiago Guerreiro on the initiative’s successes and future goals. Read more

News

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27 Oct 2020

Coca-Cola to discontinue 200 brands; hoax Woolworths causes stir; adidas mulls Reebok sale – news digest

In our latest round-up, we look at the boss of Kenya’s Anti-Counterfeit Authority departing following a fake number plate scandal, IP Australia launching a new quality approach, and much more. Read more

26 Oct 2020

Innovation at the Korean Intellectual Property Office: spotlight on cutting-edge tools and services

In an exclusive guest post, the new commissioner of the Korean Intellectual Property Office, Kim Yong-Rae, reveals the agency’s innovative non-core tools and services for trademark users – and those planned for the future. Read more

26 Oct 2020

Still time to nominate for the 2021 WTR Industry Awards and WTR 300 projects

There is still time to nominate corporate trademark professionals for recognition at the WTR Industry Awards 2021 and in the next edition of WTR 300. Read more

25 Oct 2020

Corsearch branches into anti-piracy; WTR reveals new panel-based research project; Apple tops Brand Finance intangible value report; and much more

Everything we covered on WTR over the past seven days – and all you need to know from the world of trademarks to set yourself up for the start of another busy week. Read more

Analysis

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29 Oct 2020

What the UK’s new GI approach means for EU and US trade agreements

While the EU's silence attempts to have the UK squirming, the new GIs place the UK in a favourable position with its non-EU allies. Read more

28 Oct 2020

“An outstanding response” – Chilean IP office recovery praised after second arson attack on headquarters

The Chilean National Institute of Industrial Property has suffered a second arson attack in less than a year, with national director Loreto Bresky describing it as a “hard blow” for the agency. Read more

27 Oct 2020

‘Counterfeit goods are strictly prohibited’ – Tokopedia responds to brand owner concerns

Following reports of a growing problem with fake goods on Indonesian online marketplace Tokopedia, a company spokesperson tells WTR that combating counterfeits “possess its own challenges”. Read more

27 Oct 2020

“The myths can make companies disengage” – exclusive interview with IP Australia’s China representative

Charlotte Trinh has big ambitions to grow the role and push for more engagement between Australian brand owners and the Chinese IP system. Read more

Legal updates

29 Oct 2020

Bombay High Court frowns on Future’s copying of Parle’s biscuit packaging

This order by the Bombay High Court should be welcomed by brand owners, as it reinforces that consumers make purchasing decisions based not only on brand names, but also on the overall visual presentation of the products. Read more

29 Oct 2020

Board of Appeal confirms refusal of IT365 as being descriptive

The Board of Appeal has agreed with the Estonian Patent Office that the combination of the term ‘IT’ and the number 365 would be perceived as referring to IT services which are provided throughout the year. Read more

28 Oct 2020

Criminal action filed for tampering with Huawei mobile phones

Following the seizure of Huawei mobile phones in Lima, the prosecutor has filed a criminal claim before a specialised court on the grounds that the defendant had tampered with the phones in a manner detrimental to Huawei Technologies Co Ltd. Read more

28 Oct 2020

CJEU clarifies how to assess distinctive character of mark to be applied to goods used to deliver a service

In a case involving a mark consisting of red, orange and white ellipses placed in a specific position on buses and trains, the Court of Justice of the European Union has provided guidance on the criteria to take into account when determining the distinctiveness of a mark intended to be applied to goods used to deliver a service. Read more

27 Oct 2020

Is it a Big Mac? Is it a Big Jack? No, it’s a Big MacJac!

Australia’s burger wars have heated up again, with McDonald’s threatening trademark infringement proceedings against restaurant chain Rashjays over its Big MacJac burger. This comes after McDonald’s took action against rival Hungry Jacks over its Big Jack burger. Read more

Insight

23 Sep 2020

Copyright’s revenge on designs: Italian Supreme Court applies CJEU Cofemel ruling

An Italian Supreme Court decision concerning the layout of Kiko make-up stores is a welcome sign of the harmonising effect of the Court of Justice of the European Union’s Cofemel ruling, but could open the door to the protection of 3D designs with little originality or that are mainly functional. Read more

23 Sep 2020

How to determine the best form of protection for a product’s appearance

Trade dress may be the go-to choice for protecting a product’s appearance or configuration, but other IP rights have plenty to offer. Read more

23 Sep 2020

Getting creative: when to protect trade dress under trademark or competition law

In the absence of trade dress-specific legislation, rights holders in China must manoeuvre around the Trademark Law and the Anti-unfair Competition Law if they are to protect their unique designs effectively. Read more

23 Sep 2020

The pros and cons of industrial designs, trademarks and trade dress

Having a distinct look is the best way for a product to stand out from the competition, but as Mexico awaits further guidance on new trade dress provisions, how should brand owners choose the right protection for their designs? Read more

Events

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27 October
2020

Brand Strategy Southeast Asia 2020

With global trade tensions showing no signs of abating, Southeast Asia looks set to benefit as manufacturers shift strategic facilities into the region - further boosting the burgeoning tech and R&D sectors. However, this growth will place unprecedented pressures on an already uneven IP landscape and rights-owners, both international and home-grown, will need to navigate with care.

Against this background, IAM is pleased to announce the return of our combined programme: IPBC Southeast Asia, hosted by IAM, and Brand Strategy Southeast Asia, presented by World Trademark Review, to the Grand Hyatt Singapore on 27 October 2020.

25 November
2020

Brand Strategy Australasia 2020

In light of the current situation with Covid-19, IPBC Australasia 2020 will now be held as a dedicated half-day virtual programme on 25 November comprising two targeted panel discussions: the first covering IAM’s patent/technology-led agenda focused on IP value creation and the second session, hosted by WTR, providing insights into the latest issues in brand protection, management and value creation.

3 - 4 December
2020

Brand Strategy China 2020

Brand Strategy China 2020 will be held as a dedicated virtual programme comprising four sessions spread across two half days - on 3 and 4 December 2020. As in previous years, this will be a highly focused programme delivering practical, actionable takeaways for professionals tasked with protecting the integrity and maximising the value of their brands across Greater China. With insights from both domestic and international brand owners, plus key government agency representatives, Brand Strategy China 2020 is a unique forum which drills down into best practice and draws on the unique perspectives of the visionaries at the forefront of the industry. All sessions will be bilingual with simultaneous English and Mandarin translations.

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