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UAE counterfeit seizures, Brazil predicted for 2019 Madrid accession, and Lacoste scores big win: news round-up

In our latest round-up, we look at new gTLDs on the rise, consumer trust in big brands, a General Court decision involving TMview, considering a trademark audit, and much more.

UAE counterfeit seizures, Brazil predicted for 2019 Madrid accession, and Lacoste scores big win: news round-up
10 Dec 2018

Alibaba avoids inclusion on European Commission's new notorious markets list

The European Commission published its Counterfeit and Piracy Watch List, identifying both online and physical marketplaces that are reported to engage in or facilitate counterfeiting and piracy.

10 Dec 2018

Servicing the global flow of innovation and ideas: the IP Office of Singapore year in review

The recent boom in economic activity across Asia has been reflected by a significant increase in the number of IP applications filed in the region – and the IP Office of Singapore is leading the way in innovation.

Featured

11 Dec
2018

CJEU judgment on ALCOLOCK case rejects Brexit stay argument

The Court of Justice of the European Union has handed down judgment in an appeal brought by Alcohol Countermeasure Systems Inc. The decision dealt with genuine use of a trademark but also considered the impact of Brexit on EU proceedings where one party relies on a UK registered trademark only. Read more

11 Dec
2018

Ecuador IP Office accepts notarial verification of webpage as valid evidence in Andean opposition

For the first time, the Ecuador IP Office has accepted the notarial verification of a webpage as valid evidence in an Andean opposition. Registration of AQUAVI was denied in Ecuador as the Colombian Trademark Office website showed that the opponent owned the Colombian mark AQUAVIT. Read more

10 Dec
2018

“More Than a Feeling”: Boston trademark dispute slips away

In a dispute between two former members of a rock band, the First Circuit US Court of Appeals issued a judgment in favour of the defendant, concluding that the plaintiff failed to establish a breach of contract relating to the use of a co-owned trademark. Read more

Most reads

1

Hugo Boss accused of bullying, Mexico IPO enters logo debate and fake shopping apps discovered: news round-up

2

Clarivate Analytics snaps up TrademarkVision as new research offerings eyed

3

A lawsuit is coming? – HBO nails PR response in trademark spat with Trump

4

WTR 1000 2019 rankings now available to subscribers

5

Amazon green light, WHOIS access, URS proposals: six key takeaways from ICANN 63

News

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10 Dec 2018

Final chance to make nominations for the WTR Industry Awards 2019

The nomination window for the WTR Industry Awards and WTR 300 closes on Tuesday 11 December. Act now to let us know who you regard as the world's leading in-house trademark professionals.  Read more

7 Dec 2018

Turkey plain packaging, WIPO praises Pakistan IPO and '.amazon' up in the air: news round-up

In our latest round-up, we look at a tussle over BRENT marks in Singapore, a "worrying trend" of retail fakes in Papua New Guinea, a new UK IP minister, and much more. Read more

7 Dec 2018

Nine takeaways from Brand Strategy China

This week, WTR hosted the third annual Brand Strategy China in Shanghai, and we present best practice takeaways from the attending senior brand protection experts from the corporate and legal worlds. Read more

5 Dec 2018

“A significant blow for Cadbury” – UK Court of Appeal decision puts purple trademark at risk

According to experts, the decision at the UK Court of Appeal leaves Cadbury's purple trademark “vulnerable” and could spur competitor Nestlé to consider options in terms of cancelling the registration. Read more

Analysis

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10 Dec 2018

How INTA is helping to shape the trademark environment in Africa and the Middle East

This week, INTA is hosting its 2018 Middle East and Africa Conference. As the event kicked off, we spoke with an INTA representative to look at recent developments and why an annual meeting in the region is “a natural step”. Read more

7 Dec 2018

Managing Elvis and Marilyn Monroe: acquisition lessons from Authentic Brands Group

WTR sits down with Jay Dubiner, general counsel of Authentic Brands Group, to get insight into brand management of an IP portfolio that includes Marilyn Monroe, Elvis Presley and Shaquille O'Neal. Read more

7 Dec 2018

Perfect storm for counterfeits: why Brazil needs to be on the international radars

The economic recession has created conditions for a sharp increase in counterfeit products in Brazil’s physical and virtual marketplaces – making policing an urgent requirement for brands. Read more

6 Dec 2018

Democratising trademark surveys – academic calls for step-change in distinctiveness evidence gathering

New study calls for a revolution in trademark survey evidence, with an expert telling us he hopes that brand owners will start embracing lower-cost survey alternatives. Read more

Legal updates

10 Dec 2018

The importance of objective conditions under which marks may be present in the market

The General Court has overruled a judgment by the EUIPO Boards of Appeal to reject a figurative trademark on the grounds of risk of confusion with another figurative mark, basing its decision on consumer perception of the marks. Read more

7 Dec 2018

Swiss court rules on interaction between 2D and 3D elements with regard to the overall distinctiveness of a sign

The Swiss Administration Court has issued a new judgment, which provides useful guidance on 2D and 3D elements. The court overruled the IP Office’s decision to extend protection of the Nussknackermännchen (nutcracker) trademark to Switzerland. Read more

7 Dec 2018

The sentencing framework of Section 49(c) of the Trademarks Act

A court judgment on fashion retailer’s four-week imprisonment for selling counterfeit shoes has clarified sentencing under the Trademarks Act. Judge affirmed Singapore’s no-nonsense approach to infringement. Read more

6 Dec 2018

German court asserts that Chinese manufacturer violated BMW’s trademark rights

The District Court of Hamburg has ruled that Chinese manufacturer Ninebot violated BMW’s trademark rights when it released a promotional video containing images of BMW’s MINI cars and logo. Read more

6 Dec 2018

Low distinctive character of a mark does not imply that there is no likelihood of confusion

The General Court has confirmed the EUIPO’s decision that there was a likelihood of confusion between two marks with the similar word element ‘diet’, which both covered the same or similar goods. The court dismissed the applicant’s argument that the dominant figurative elements had been overlooked. 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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3 Dec
2018
Latest

Brand Strategy China 2018

Building on the huge success of the events in 2016 and 2017, World Trademark Review is proud to announce the return of Brand Strategy China to the Ritz-Carlton Hotel Shanghai, Pudong.

2-4 Dec
2018
Latest

IPBC Asia 2018

The Asia-Pacific region is cementing its position as the focus point for the international IP market as its rapid development drives deal making, IP investment and litigation trends. Against this background, IAM is pleased to be returning to Shanghai for the sixth IPBC Asia, hosted at the Ritz-Carlton Pudong on December 2 to 4 2018.

28 Jan
2019
Latest

Managing Trademark Assets Europe 2019

As brands grow, new markets open up, the online world expands and social media presence is enhanced, both opportunities and infringement result. But while responsibilities grow, for many resources and budgets do not. World Trademark Review’s Managing Trademark Assets Europe will provide insights and best practice for cost-effectively managing trademark portfolios.

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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