Amending the Lanham Act, protecting Lamborghini in Brazil, and "a factory of ideas": news digest 

In our latest edition, we look at Michael Kors launching a digital store on Alibaba’s Tmall, INTA's call for the Lanham Act to be amended, an illicit trade report from TRACEIT, China’s IP transformation, and much more.

Amending the Lanham Act, protecting Lamborghini in Brazil, and
19 Jul 2019

Brexit preparedness, diversity recognition and rising demand: takeaways from the UKIPO’s Annual Report

The UK Intellectual Property Office has published its latest annual report, covering the period from 1 April 2018 to 31 March 2019. We have combed through the 100-page report to bring you our five key takeaways.

19 Jul 2019

USPTO to fight back against threat to applications and registered marks

The USPTO’s commissioner for trademarks, Mary Boney Denison, has expanded on the office’s plans to prevent individuals making unauthorised changes to trademark applications and registrations. The plans have been welcomed by one industry expert, who calls for the changes to be implemented as soon as possible.

Featured

19 Jul
2019

European Union loses €60 billion each year in sales due to counterfeiting

The EUIPO’s 2019 Status Report on IPR Infringement has revealed that annual losses due to counterfeiting and piracy in the European Union are estimated at €60 billion, which is equivalent to 7.4% of all EU-wide sales. Read more

19 Jul
2019

“Juul be sorry”: failure to assign domain name results in contempt of court

The decision of the High Court of England and Wales in Juul Labs Inc v Quickjuul Ltd provides a rare example of a civil court imposing penal sanctions for contempt of court. Read more

18 Jul
2019

Lessons from the high-profile spat between Haas F1 and Rich Energy

When Haas F1 entered the 2019 Formula 1 season, it brought with it a brand new title sponsor, with a colour scheme on its livery to match. However, the relationship has resulted in Twitter rants, leaked documents and legal action – as well as takeaways for trademark professionals. Read more

News

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18 Jul 2019

The full version of the 2019 WTR 300 is now available and free to view

WTR is pleased to announce the publication of the enhanced version of the 2019 WTR 300: The World’s Leading Corporate Trademark Professionals, which this year has been published on a free-to-view basis. Read more

16 Jul 2019

Diversity in the legal workplace: interview with the global chair of A&O’s LGBT+ network

This week, Stonewall, an LGBT+ rights charity, named Allen & Overy one of its Top Global Employers. WTR sat down with Jim Ford, chair of the firms A&Out network, to discuss the importance of LGBT+ diversity and inclusion in law firms. Read more

16 Jul 2019

Yosemite settles, UKIPO needs your help, and Huawei seeks harmony: news digest

In our latest edition, we look at a reminder of the medical risks of counterfeits in Hong Kong, a car air freshener brand taking Ryanair to court, Monaco now using the TMclass list, applications up in Bhutan, and much more. Read more

15 Jul 2019

Brand Protection Online Europe: Coty, Maus Freres and Superdry professionals among first speakers revealed

WTR announces the first speakers for Brand Protection Online Europe, taking place in London on 14 October 2019. Among the first names revealed are trademark experts from Alibaba, BP, Tonino Lamborghini, and more. Read more

Analysis

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18 Jul 2019

“An enormous opportunity” – IP provisions of EU-Mercosur Agreement lauded

The European Union and the Mercosur bloc of countries have agreed a comprehensive trade agreement that includes significant IP provisions that rights holders should be aware of.  Read more

17 Jul 2019

Five counterfeit hotspots you should be aware of in the Dominican Republic

In a new regular series, we highlight marketplaces across the world that reportedly engage in the trade of counterfeit goods. This week, we focus on hotspots in the Dominican Republic. Read more

17 Jul 2019

China’s economic growth is slowing but expect a renewed focus on brand creation

In our latest opinion column, we consider what impact China’s economic growth slowdown may have on ‘Made in China 2025’ and ‘Belt and Road’ – and, by extension, rights owners. Read more

15 Jul 2019

Reports of law firm phishing attacks serve as reminder of never-ending threat

Recent reports have put a spotlight on phishing directed at law firms and solicitors. While not a new phenomenon, the coverage highlights a significant problem that is not going away, and one that firms must be quick to tackle. Read more

Legal updates

18 Jul 2019

New regulations on brands that evoke Italy or are linked to Italian territory

The so-called ‘Growth Decree’, which aims to encourage economic growth, contains certain provisions relating to IP rights. In particular, it regulates the adoption of distinctive signs that evoke Italy and, more generally, of trademarks linked to the Italian territory. Read more

18 Jul 2019

Post-verdict motion for increased damages ends on a sour note

In Barrington Music Products Inc v Music & Arts Center, the US Court of Appeals for the Seventh Circuit has held that the mark owner was not entitled to an increased damages award after discovering that two of the defendants were not separate companies. Read more

17 Jul 2019

UAE trademark office implements substantial reduction in registration and renewal fees

In a move that will be welcomed by local and international brand owners, the UAE trademark office has reduced the registration fee payable for trademark applications by one-third. Read more

17 Jul 2019

Crunch time for Kellogg’s Nutri-Grain cereal

Multinational food and drink giant Nestlé has successfully opposed the registration in New Zealand for the 3D shape of Kellogg’s Nutri-Grain cereal. Read more

16 Jul 2019

Criminal sentence imposed for commercialisation of infringing souvenirs

The Criminal Court No 15 of Valencia has sentenced the managers of a company in the souvenir industry for committing a crime against IP rights under with Article 273 of the Criminal Code. Read more

Insight

17 Jul 2019

Healing confusion – choosing the correct name for pharmaceutical trademarks

Similarity among prescription drug names should be avoided, as the potential confusion carries a risk to consumer health. Bringing the best pharmaceutical trademark to market can be arduous, but it will assist in the safe prescription of medication. Read more

17 Jul 2019

Infrequent pharmaceutical disputes have far-reaching consequences in Malaysia

While disputes over pharmaceutical trademarks are few and far between, decisions can have a significant effect on product manufacturing and public health. Read more

17 Jul 2019

Restrictions and conflicts – challenges faced by pharmaceutical trademarks in China

Pharmaceutical products play a key role in public healthcare. As a result, the protection of pharmaceutical trademarks is fraught with unique challenges, particularly when it comes to a pharmaceutical product’s name and generic name. Read more

17 Jul 2019

Naming, registering and advertising pharmaceutical trademarks in Russia

The pharmaceutical industry is a high-tech development priority and pharmaceutical production must happen alongside the development of an appropriate IP protection strategy. Pharmaceutical trademarks owners would be well advised to consider any issues in the context of the Russian market. Read more

Events

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14 October
2019
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Brand Protection Online Europe

After a successful debut in the United States, World Trademark Review (WTR) is bringing Brand Protection Online to Europe this October! Brand Protection Online Europe (14 October, London) will provide a unique forum for in-house counsel to discuss the challenges, opportunities and risks being faced as online and technological environments continue to evolve.

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