Major new Gleissner investigation; USPTO examination concerns; first registered ARIPO GI; 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.

Major new Gleissner investigation; USPTO examination concerns; first registered ARIPO GI; and much more
From the <em>WTR</em> archive: industry data deep dives
28 Nov 2020

From the WTR archive: industry data deep dives

For our latest delve into WTR’s unrivalled archive of trademark content, we present a selection of data-driven intelligence pieces from the past few years.

Fatigue, motivation, satisfaction: exclusive interview with leading USPTO filer Jonathan Grant Morton
27 Nov 2020

Fatigue, motivation, satisfaction: exclusive interview with leading USPTO filer Jonathan Grant Morton

Chinese brand owners are filing for trademarks in record numbers, with Morton personally handling over 3,500 applications in September. He reveals the painstaking effort that goes into managing this much paperwork and discusses the impact of the imminent trademark fee increase.

Featured

30 Nov
2020

Deutsche Post defeated in opposition against ‘post horn’ mark

Deutsche Post is well known for asserting its trademark rights against competitors. In the present case, however, it was unsuccessful in its attempt to oppose the registration of a mark consisting of a stylised horn on a yellow background by Pošta Slovenije. Read more

30 Nov
2020

Kraft Heinz left holding an empty peanut butter jar with no label (or lid)

The long-running battle between food giant Kraft Heinz and Australian company Bega Cheese over packaging for their peanut butters has come to an end, with Australia’s highest court throwing out Kraft’s bid to appeal an earlier ruling allowing Bega to continue using its distinctive trade dress. Read more

27 Nov
2020

“An indelible milestone”: first ARIPO GI registration is step towards Africa-wide regime

An ARIPO spokesperson says that it will “help promote the branding of African products and help them access the global market”. Read more

News

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27 Nov 2020

Grana Padano cease and desist controversy; USPTO anti-scam efforts; Nestle sells Yinlu brand – news digest

In our latest round-up, we look at Amazon and the IPR Center teaming up to combat fake goods, Italian Customs seizing 4,000 illicit bearings, and much more. Read more

26 Nov 2020

Kenya publishes new guidebooks on fighting fakes

The National Council on the Administration of Justice and the Kenya Association of Manufacturers prove that a multi-agency approach is key to fighting counterfeits in the country. Read more

25 Nov 2020

The two laws set to shake up the Kenyan IP system in 2021

The latest legislative reforms in a series of ongoing improvements to the national IP regime offer welcome news for rights holders in Kenya. Read more

24 Nov 2020

USPTO seeks anti-counterfeiting comments; Diageo hunts for premium brands; Smashburger dispute – news digest

In our latest round-up, we look at MarkMonitor becoming a licensed domain name registrar in China, INTA announcing the recipients of its President’s Awards, and much more. Read more

Analysis

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24 Nov 2020

Michael Gleissner: massive scope of trademark and domain portfolio revealed in exclusive data

A major new investigation from WTR has identified over 6,800 trademarks and 6,900 domain names that appear to be related to multi-millionaire and serial trademark filer Michael Gleissner. Read more

23 Nov 2020

Computing and software brands share price plunge continues downward pressure on WTR Brand Elite performance

The WTR Brand Elite indices registered a two-point drop in the month ending 30 September – their first fall in seven months. The latest results returned a similar decline. Read more

19 Nov 2020

Inside the growing complexity of counterfeit networks, and how to uproot them

Rooting out these networks requires a canny appreciation of how bad actors work with business models akin to their legitimate counterparts. Read more

18 Nov 2020

Navigating regulation and a crowded Class 5: the race to register a covid-19 vaccine

This week, The Telegraph reported on some of the likely contenders for Pfizer’s vaccine name based on trademark filings by the company and partner BioNTech. Read more

Legal updates

27 Nov 2020

Different panellists, different views: why selecting a three-member panel may be advisable in borderline cases

UDRP panels can have radically different approaches to the same facts, and the selection of a three-member panel may be preferable in borderline cases. Read more

27 Nov 2020

If it looks like a whisky, then it must be a whisky

This judgment of the Supreme Court of Appeal of South Africa should reassure traders in the alcoholic beverages market of the strong protection afforded to them in instances of flagrant unlawful competition. Read more

26 Nov 2020

LOTTO v LOTTOLAND: General Court considers conditions for application of Article 8(5)

The General Court has confirmed that, notwithstanding the high reputation of the LOTTO marks and the above-average degree of similarity between LOTTO and LOTTOLAND, the existence of a link between the marks could be ruled out. Read more

26 Nov 2020

No statutory power to allow partial oppositions under Trademarks Act

In a dispute between two jewellery companies, the IP adjudicator at the Intellectual Property Office of Singapore has held that there is no statutory power to grant partial oppositions and that the opportunity to amend an application is strictly confined to the examination stage. Read more

25 Nov 2020

Rhymes but not a crime: BOTOX v PROTOX

In a blow to pharmaceutical company Allergan, the Federal Court of Australia has concluded that the use of PROTOX and BOTOX in composite phrases for skincare products did not infringe Allergan's prior BOTOX marks. 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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10 - 11 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.

Brand Strategy Southeast Asia 2021

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.

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