Deep dive into Apple counterfeit fight, Skripal poison pair trademark, and most valuable UK brands: news round-up

In our latest edition, we look at China and Singapore partnering up for an IP initiative, another trademark scam highlighted, a German court dealing a blow to ICANN, and much more.

Deep dive into Apple counterfeit fight, Skripal poison pair trademark, and most valuable UK brands: news round-up
21 Sep 2018

UDRP misuse warning, non-traditional tips, and the danger from subtle copies: insights from MARQUES 2018

This week’s MARQUES Annual Conference in Paris draws to a close today. We present some of the key insights from the event, including insight into the standoff around WHOIS data access, the one Brexit-related question you need to be asking, and more.

20 Sep 2018

Calling all brand owners: act quickly if you want to help shape the future of online enforcement

In this guest post, Brian J Winterfeldt, president of ICANN’s Intellectual Property Constituency, outlines why it is critical that rights holders contribute to an ICANN survey about online enforcement, which closes at the end of next week.

Featured

21 Sep
2018

Success for Apple as General Court finds certain degree of similarity between APO and APPLE marks

In a victory for Apple Inc, the EU General Court has annulled a decision of the Fourth Board of Appeal of the EUIPO in which the latter had found that the figurative mark APO was not similar to Apple’s earlier marks. Read more

21 Sep
2018

New design registration regime: what you need to know 

The new Israeli Design Law recently came into effect, and the Ministry of Justice subsequently published draft new Design Regulations. This update reviews the key points concerning the filing, examination and registration process. Read more

20 Sep
2018

Ultimate trademark toolkit: our free-to-view insights into trademark law across the globe 

The 11th edition of the World Trademark Review Yearbook has been released, providing legal professionals worldwide with a simple, easy-to use digest of the structure of trademark regulation in key jurisdictions across the globe. Read more

News

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19 Sep 2018

Digital revolution in Africa: ARIPO unveils groundbreaking free IP database

The African Regional Intellectual Property Organisation (ARIPO) has launched a free online database as it bids to centralise IP records from across the continent.  Read more

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. 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

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. Read more

Analysis

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19 Sep 2018

Creative trademark strategies are essential for brands venturing into newly-legalised US marijuana markets

Both Coca-Cola and musician Jimmy Buffett have been linked with marijuana brand partnerships over the past week. Such deals pose significant trademark difficulties, but there may be workaround strategies available.  Read more

18 Sep 2018

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. Read more

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

Legal updates

20 Sep 2018

Bad news for tourism and souvenir industry as CJEU rules that castle name can be registered as trademark

In a ruling that sits uncomfortably with its earlier decision in Windsurfing Chiemsee, the Court of Justice of the European Union has rejected the notion that the name of a famous Bavarian castle could serve as a geographic indication for the relevant goods/services.  Read more

20 Sep 2018

Tread lightly: tyre company’s use of competitor’s mould is reverse passing off

In a case involving sellers of industrial tyres, the US Court of Appeals for the Ninth Circuit has confirmed that the defendant’s use of a competitor’s tyre mould to make its own tyres created a likelihood of confusion. Read more

19 Sep 2018

Delhi High Court: defendants copied all main features of Marico’s PARACHUTE-branded product

In Marico Limited v Kumar, the Delhi High Court has restrained the defendants from infringing Marico Limited’s IP rights in its PARACHUTE-branded coconut oil. Read more

19 Sep 2018

Eurasian Economic Commission updates recommendations on inclusion of licence fees in customs value of imported goods

The Eurasian Economic Commission has updated the recommendations of the Eurasian Economic Union on the treatment of licence fees for the purpose of customs valuation on the territory of the Eurasian Economic Union. Read more

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

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.