How to build the IP dream team: exclusive interview with Mark McVicar

Producing excellent work consistently can’t be achieved by simply hiring impeccable talent. WTR spoke to Winkler Partners' Mark McVicar about what it takes to be an effective team leader and the keys to finding and refining junior talents.

How to build the IP dream team: exclusive interview with Mark McVicar
23 Sep 2019

Five counterfeit hotspots that you should know in Paraguay

In the next instalment of our series on physical marketplaces around the world that reportedly have a counterfeit goods problem, we head to Paraguay.

23 Sep 2019

The Aboriginal flag dispute in focus: who owns the right to use?

The Australian government is considering whether to compulsorily acquire the rights to use the Aboriginal flag on public policy grounds. Kate O'Rourke of Mewburn Ellis takes a deep dive into the debate.

Featured

23 Sep
2019

Online infringement of American company’s trademark results in imprisonment of Iranian infringer

The Criminal Court of Tehran has sentenced an Iranian scientist to one year of imprisonment for infringement of the American Iron and Steel Institute’s trademarks. Read more

23 Sep
2019

The ISETAN TARTAN case: refusal of trademarks that deceive public as to goods’ geographical origin

In Scotch Whisky Association v Isetan Mitsukoshi Ltd, the High Court of Singapore has upheld the Scotch Whisky Association’s appeal against the registration of the mark ISETAN TARTAN for all alcoholic beverages except beer and sake. Read more

22 Sep
2019

New safety warning over USPTO rules; Charming Charlie resurrection plans; takeaways from MARQUES; breaking down gender barriers in the IP world; plus much more.

Everything we covered on WTR over the last 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

News

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20 Sep 2019

Air New Zealand’s CEO on controversial application, praise from Peppa Pig and a blow for adidas: news digest 

In our latest news digest, we look at the backlash centred on a SAGA-branded customer brochure, the latest on Air New Zealand’s controversial Kia Ora application, a China IP firm reportedly mulling a sale, and much more. Read more

20 Sep 2019

“Your very life may be at risk” – USPTO urged to reconsider domicile requirement due to safety concerns

A new petition to the USPTO requests that new rules regarding physical addresses be reconsidered. Talking exclusively to WTR, the attorney who filed the petition claims that it is “a time-sensitive matter” due to serious ongoing risks. Read more

19 Sep 2019

Adultblocks, benchmarking, and second round of gTLDs: brand protection learnings from Foresight 2020

Last week, a seminar was hosted at INTA’s headquarters in New York titled Foresight 2020: State of the Union in the Domain Name Industry. We present takeaways from the event in this exclusive guest post. Read more

18 Sep 2019

Laying the groundwork for enforcement success in Brazil

Litigation success in Brazil is ultimately rooted in an understanding of the law and the strategic approach adopted. In the first of a two-part article, João Vieira da Cunha and Jaddy M A P Messias of Gusmão & Labrunie answer five key questions about the pre-litigation phase. Read more

Analysis

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21 Sep 2019

New Zealand thrives where others have failed – and it is all down to brand

The small island country has boosted its tourism by turning itself into a brand; the jurisdiction is increasingly attractive for multinational brands and it makes its presence known on the world stage. Read more

20 Sep 2019

“It’s the fear of the unknown”: Microsoft’s Priscilla Gomes on why AI should be embraced by the legal community 

At this week's INTA Trademark Administrators and Practitioners meeting, WTR sat down with Priscilla Gomes, a paralegal in the Windows and games department of Microsoft, to find out whether fears of AI are warranted or misguided by legal professionals. Read more

20 Sep 2019

Brexit fraud, an uncertain future for GIs and law firm technology – takeaways from MARQUES 2019

As hundreds of trademark practitioners descend on Dublin this week to attend the 2019 MARQUES Annual Conference, we provide key learnings from one of the biggest trademark events of the year. Read more

19 Sep 2019

Charming Charlie brand set for resurrection with trademarks and data central to strategy  

Last week CJS Holdings won an auction for the Charming Charlie IP portfolio, prevailing with a $1,125,000 bid. The sale, and plans to resurrect the retail brand, offer a number of strategic takeaways for trademark professionals. Read more

Legal updates

20 Sep 2019

PREZOIL case: the scope of protection of a mark versus the discretion of the Intellectual Property Office

In a controversial decision, the Ecuadorian Intellectual Property Office has rejected an opposition based on information found on the opponent’s website, instead of relying on the trademark registration certificate issued by the office itself. Read more

20 Sep 2019

Sky’s opposition maintained against Skyworth Group Company Limited’s application to register SKYWORTH

The hearing officer has upheld an opposition by Sky International AG against Skyworth Group Company Limited’s application to register SKYWORTH for goods in Class 9 in Ireland. Read more

19 Sep 2019

Delhi High Court: use of word that is prominent in registered logo mark amounts to infringement

In Max Healthcare v Sahrudya Health Care, the Delhi High Court has held that the use by the defendant of a word that was prominent in the plaintiff’s logo marks amounted to infringement. Read more

19 Sep 2019

CJEU clarifies jurisdiction in online infringement cases: the consumers' country is the place of infringement

In a victory for trademark owners, the Court of Justice of the European Union has clarified the issue of jurisdiction in cases involving the online infringement of EU trademarks. Read more

18 Sep 2019

Roughing the applicant: USPTO refuses Tom Brady’s TOM TERRIFIC trademark applications

The USPTO has refused New England Patriots quarterback Tom Brady’s applications for TOM TERRIFIC in Classes 16 and 25, finding that the mark was “uniquely and unmistakably” associated with former New York Mets pitcher Tom Seaver. Read more

Insight

29 Jul 2019

Practical strategies for managing luxury brands

A group of senior trademark and brand professionals recently convened in New York to discuss strategies for protecting, enforcing and monetising fashion and luxury brands. This special report details some of the key points and presents essential takeaways. 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

18 Jul 2019

EU offers increasingly interesting market for pharmaceutical trademarks

The European Union offers an increasingly interesting market for pharmaceutical companies, thanks to its growing elderly population, above average expenditure on drugs and robust use of branded drugs over generic equivalents. Pharmaceutical trademarks are a crucial element of this. Read more

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

Events

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14 October
2019
Latest

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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Research projects tracking the latest market trends for trademark professionals.

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