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How the evolution of ‘trademark counsel’ to ‘brand professionals’ will significantly impact service demands

In this week’s opinion column, we consider how law firms can future-proof their trademark practices.

How the evolution of ‘trademark counsel’ to ‘brand professionals’ will significantly impact service demands
18 Sep 2018

Most relevant brands in China, OAPI hosts IP celebration, and Trademark Licensing Protection Act in the spotlight: news round-up

In our latest round-up, we look at the IP office of Chile extending deadlines for Japanese applicants, the WHOIS reform group at loggerheads, Indonesia stepping up anti-piracy efforts, and much more.

18 Sep 2018

Crazy or canny? Tesco trademark ‘misstep’ may actually be a conscious commercial decision

Supermarket chain Tesco has been the focus of media coverage due to the lack of registered trademark protection for its new discount store brand Jack's, a move described as “absolute madness”. However, the reality is a more nuanced.

Featured

18 Sep
2018

Federal Court once again affirms that "use" of a trademark does not require bricks and mortar for non-Canadian businesses  

In Hilton Worldwide v Miller Thomson, the Federal Court of Canada has held that providing “hotel services” does not require a physical hotel in Canada to constitute “use” of a trademark in the country. Read more

18 Sep
2018

Kazakhstan amends IP legislation - key changes highlighted

Various amendments to the IP legislation have come into force in Kazakhstan. This update highlights the most significant changes brought about by the amendments. Read more

18 Sep
2018

Get the inside track on cost-effectively managing trademark portfolios

WTR is pleased to announce that Managing Trademark Assets Europe will be heading to London on 28 January 2019. The event will present cutting-edge strategies for the creation, protection and monetisation of strong brands. Read more

Most reads

1

“A chef’s name is a trademark” – dispute highlights brand protection risks in the fine dining restaurant industry

2

Getting ready for a fight – trademark enforcement, accusations of bullying and preparing for a backlash

3

China adopts new e-commerce law; expert highlights “concerns” for rights holders

4

The fall of the own-name defence

5

New leadership, new challenges? Industry insights on EUIPO operations

News

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15 Sep 2018

Social media buy-and-sell groups to be targeted in anti-counterfeiting initiative backed by UK government

A new programme has been developed in the UK to create greater awareness amongst the administrators of 'buy-and-sell' social media groups about their legal responsibility to prevent the promotion and sale of counterfeit goods. Read more

14 Sep 2018

Saudi Arabia to adopt plain packaging, T-ara resolve trademark dispute, and ICANN needs your feedback on RPMs: news round-up

In our latest round-up, we look at the US brands with the most loyal customers, 7-Eleven taking a menswear brand to court for alleged trademark infringement, and much more. Read more

13 Sep 2018

A detailed look at the positives and negatives of China’s new e-commerce law

In this guest blog, Joe Simone from SIPS looks at China's newly-adopted e-commerce law and identifies the aspects which will have the most significant impact, both good and bad, for IP enforcement work. Read more

12 Sep 2018

Trump administration should take credit for China’s counterfeits crackdown, claims trade association

The Precious Metals Association of North America (PMANA) has lauded the Trump administration in its response to China’s adoption of long-awaited e-commerce legislation.  Read more

Analysis

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17 Sep 2018

Trademark litigation remains flat in 2018 as Central District of California continues to be ‘go-to’ venue

Lex Machina has reported that 2,745 trademark litigation cases have been filed in the US so far this year. Therefore, the projected total for year-end  indicates that filings will remain flat after a near-decade of decline. Read more

14 Sep 2018

“There is no one-size-fits-all approach to enforcement” – exclusive interview with Mars Inc’s Sophie Anger

In an in-depth discussion with Sophie Anger, associate general counsel of marketing properties for the global petcare unit of Mars Incorporated, she offers enforcement tips, explains how efficiency is her guiding principle, and much more. Read more

13 Sep 2018

South African IPO recovers CIPRO domain after cybersecurity concerns

Fears over potential phishing attacks were sparked last month when it was revealed that a domain name previously used by South Africa's Companies and Intellectual Property Commission had been purchased by an individual in Mexico. Read more

11 Sep 2018

Don’t underestimate the rise of Chinese brands (and the impact for all rights holders)

In our latest opinion piece, we reflect on the scale of the Chinese government's brand incubation drive, and how this ambitious project is one that will have consequence for all rights holders - no matter where in the world they are located. Read more

Legal updates

17 Sep 2018

A monster left licking its wounds: Monster Energy suffers three opposition losses

Energy drink giant Monster Energy has been involved in three trademark oppositions in New Zealand so far this year, and was unsuccessful in all three. Read more

17 Sep 2018

New rules for non-use cancellation actions: what you need to know

The Brazilian Patent and Trademark Office has issued Technical Note No 01/2018, which establishes new rules for non-use cancellation actions. This update highlights the key points for mark owners and petitioners. Read more

14 Sep 2018

Panasonic wins passing-off case concerning packaging and product designs

In a landmark decision, the Thai Supreme Court has held that the defendant was passing off its batteries as those of Panasonic, even though it sold its products under a different trademark. Read more

14 Sep 2018

UDRP complainants beware: panel may conduct further research

A recent decision under the UDRP highlights that complainants should carefully carry out research and consider the evidence they provide to satisfy the second and third requirements of the UDRP, as the panel may conduct further research. Read more

13 Sep 2018

Massimo Osti v Global Design: should a claim be issued in the IPEC or the High Court?  

The decision in Massimo Osti v Global Design shows that the choice of bringing a case in the Intellectual Property Enterprise Court or the High Court of England and Wales is not always within the control of the claimant. Read more

Insight

12 Sep 2018

The future of trademarks

Global brand owners face increasing challenges in protecting, managing and enforcing their IP rights. These include challenges arising from new technologies, new business models and new markets. Read more

12 Sep 2018

Trademark procedures and strategies: Japan

 The Examination Guidelines for Trademarks also play an important role in the examination of trademark applications at the Japan Patent Office (JPO). The most recent revisions to the examination guidelines took place in April 2017, which include clarifying the criteria for judging the similarities between trademarks. Read more

12 Sep 2018

Trademark procedures and strategies: Italy

Italy has a first-to-file system, therefore unregistered trademarks enjoy a lesser degree of protection than registered trademarks. Only in exceptional circumstances can an unregistered trademark prevail over a later registered trademark. Read more

12 Sep 2018

Trademark procedures and strategies: Israel

While the Trademark Ordinance predominantly provides protection for registered trademarks, it also protects unregistered well-known trademarks. Read more

Events

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13 Sep
2018
Latest

IPBC Japan 2018

Japan remains Asia’s IP powerhouse and IAM is pleased to announce that our bi-annual IPBC dedicated to this influential jurisdiction will return to the Hotel Okura Tokyo on September 13 2018.

18 Sep
2018
Latest

Patent Licensing 2018

As the licensing landscape remains uncertain in many of the world’s major markets, it has never been more important for licensors and licensees to stay up to speed on deal-making best practices and the changing legal and regulatory environments.

25 Oct
2018
Latest

IPBC Australasia 2018

Built on IAM’s extensive relationships within the Australian and NZ IP communities, IPBC Australasia is specifically designed for senior IP executives at the region’s leading corporates, research institutions and governmental agencies, plus emerging companies from across the industry spectrum.

Data centre

Research projects tracking the latest market trends for trademark professionals.

Thought leadership

World Trademark Review offers an extensive range of special reports.

Why subscribe?

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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