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Analysis

Wrestling with a heavyweight portfolio: Exclusive interview with WWE’s IP counsel 

At the helm of WWE’s IP department reign two central figures: Lauren Dienes-Middlen and Matthew Winterroth. WTR asked them to reveal the secrets of their success. 

Wrestling with a heavyweight portfolio: Exclusive interview with WWE’s IP counsel 
15 Aug 2019

Six counterfeit hotspots you should be aware of in Scotland

People from around the world have flocked to Scotland this month to enjoy Edinburgh’s legendary Fringe festival. Talking to WTR, one expert highlights why fake goods are no laughing matter and identifies counterfeit hotspots in Scotland that brand owners should police.

15 Aug 2019

Six ways to evolve your practice to meet client demands: insights from the law firm elite

We explore how changing client demands are shaping the modern law firm practice – and present insight into how to future-proof operations.

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16 Aug 2019

When a domain name is dropped, you need the best catcher in your team

A recent decision involving the domain name ‘ogio.com.au’ under the ‘.au’ Dispute Resolution Policy is an important reminder of how panels can have different approaches to the same facts in complex cases.   Read more

16 Aug 2019

Fifty years later, Woodstock festival gains right to sell WOODSTOCK-branded marijuana 

Woodstock Ventures, the owner of the Woodstock music festival, has won the right to use the mark WOODSTOCK to sell cannabis products in commemoration of the 50th anniversary of the famous music festival. Read more

15 Aug 2019

“A spectacular own goal”? EUIPO warns of applications with long lists of goods and services caused by its own tool

The EUIPO has warned about EUTMs with long lists of goods and services. A WTR investigation finds that the cause appears to be linked to the EUIPO’s own goods and services builder tool. Read more

15 Aug 2019

Belgian appeal court tosses SPA Mineral Water’s trademark infringement claims: third parties free to use and register SPA for cosmetic products

A groundbreaking decision of the Ghent Court of Appeal has significantly increased the chances for third parties to successfully register their SPA brand in Class 3 at the Benelux and EU level. Read more

15 Aug 2019

General Court: genuine use may be established if mark as used differs from mark as registered only in insignificant respects

The decision of the EU General Court in mobile.de v EUIPO highlights that a mark owner may, in the commercial exploitation of the sign, make variations which, without altering its distinctive character, enable it to be better adapted to the requirements of the goods or services concerned. Read more

14 Aug 2019

Nigerian Trademark Registry: recent developments expected to benefit IP system

Developments that have taken place at the Nigerian Trademark Registry over the past few months have been widely welcomed by the trademark community. Among other things, it is hoped that the establishment of the new Trademark Tribunal will speed up opposition proceedings. Read more

14 Aug 2019

Matters to be addressed in future revision of Trademark Law

Earlier this year, China’s Trademark Law was rapidly revised without public consultation. This update analyses what remains to be done and what a fifth revision of the Trademark Law should cover. Read more

14 Aug 2019

Warning issued over brand name squatting in Nigeria: how to fight back 

While brands are long used to the scourge of trademark squatting in a number of jurisdictions, it can be easy to overlook the challenge posed by companies trading off their name. A legal expert in Nigeria warns that the latter is a significant threat. Read more

14 Aug 2019

How China is cracking down on malicious filings with amendments to the Trademark Law

In recent years China has attached unprecedented importance to the protection of trademarks and new amendments to the Trademark Law aim to crack down on malicious trademark applications more effectively and punish trademark infringement more forcefully. Read more

13 Aug 2019

Keeping up with the Jonesies: UDRP panel refuses to transfer ‘littlejonesies.com’

A recent UDRP decision involving the domain name ‘littlejonesies.com’ highlights the importance of establishing a prima facie case of lack of legitimate interest when a domain name includes the registrant's name.  Read more

13 Aug 2019

Blow for Red Bull as CJEU confirms invalidity of blue and silver colour marks

In Red Bull Gmbh v EUIPO, the Court of Justice of the European Union has dismissed an appeal against a General Court decision upholding a finding of invalidity in respect of Red Bull’s blue and silver colour marks. Read more

12 Aug 2019

Seven counterfeit hotspots you should know in Taiwan

We highlight the areas that reportedly engage in the trade of counterfeit goods in Taiwan. An expert in the region provides insights on the different types of retail environment that most often house fake goods in the East Asian state. Read more

12 Aug 2019

Technology: friend or foe? Leading trademark practitioners look to the future

Leading brand professionals share their expectations about how technology will impact the work of trademark practitioners in the future – and whether it will provide a means to add value or make many current tasks redundant. Read more

12 Aug 2019

IP owners may be awarded more than minimum damages based on ‘40% rule’

A Circuit Court has held that judges can impose both compensatory damages for the loss suffered and punitive damages based on the ‘40% rule’ under Article 221bis of the Mexican Industrial Property Law. Read more

12 Aug 2019

Court of Cassation issues long-awaited decision on non-use revocation actions

The Turkish Court of Cassation has considered for the first time the legal gap created by the annulment of Article 14 of Decree-Law No 556, which regulated the use requirement for trademarks. Read more

10 Aug 2019

Poland’s economy continues to exhibit remarkable growth, but can local brands keep up?

The former communist state has developed a strong market economy, and local brands have the opportunity to exploit these conditions to gain both domestic and international traction. Read more

9 Aug 2019

Key changes proposed under Singapore’s Intellectual Property (Dispute Resolution) Bill

Singapore’s Intellectual Property (Dispute Resolution) Bill proposes significant changes to the IP dispute resolution regime and could affect all rights holders’ enforcement and protection strategies. Read more

9 Aug 2019

USPTO warns of ‘bad actors’ as filing levels return to normal

Filing levels at the USPTO have returned to ‘normal’ following weeks of unprecedented activity. However, challenges remain, with a new warning sent to users over so-called ‘bad actors’ targeting the US trademark system. Read more

9 Aug 2019

Does trademark squatting vitiate registered trademark rights? The Shan Yin case

The China National IP Administration has recently selected the Shan Yin case as one of the model cases for 2018. The case is particularly significant as it appears to anticipate changes to the Trademark Law that will become effective later this year.     Read more

9 Aug 2019

Five counterfeit hotspots that you must be aware of in Cyprus

In the latest edition of our new series into fake goods around the world, we head to the beautiful Mediterranean island of Cyprus and focus on the counterfeit hotspots that rights holders should have on their enforcement radars. Read more

8 Aug 2019

Branding lessons from Barbie: interview with professor of law Dan Hunter 

Mattel has wielded intellectual property to protect Barbie since her creation in 1959, building one of the most identifiable brands of the 20th century. Professor Dan Hunter notes that there are practical lessons to be learned from Mattel’s innovative enforcement strategies. Read more

8 Aug 2019

Pampered Chef succeeds in trademark infringement battle

Pampered Chef, a world leader in the sale of premium kitchenware products, has succeeded at trial in defending trademark infringement, passing off and dilution and depreciation of goodwill claims brought by Canada's largest retailer, Loblaws. Read more

8 Aug 2019

General Court confirms lack of likelihood of confusion between MANDO and earlier MAN marks

The EU General Court has partially upheld a decision of the First Board of Appeal of the EUIPO finding that there was no likelihood of confusion between the word mark MANDO and earlier international registrations for the figurative mark MAN. Read more

7 Aug 2019

Skateboard saga: UDRP panel allows separate ownership of almost identical domain names to continue

A recent decision involving the domain name ‘customskateboard.com’ underlines that it is sometimes difficult to predict the outcome of UDRP complaints. Read more

7 Aug 2019

Significant amendments to the Regulation on the Implementation of the Industrial Property Code

Important amendments to the Turkish Regulation on the Implementation of the Industrial Property Code were published in the Official Gazette on 8 July 2019. Read more

7 Aug 2019

Despite backlash, Ferrari may benefit from its spat with designer Philipp Plein

This week, a dispute between Philipp Plein and Ferrari went public after the German fashion designer posted a cease and desist letter on social media. While online criticism has ensued, this could be to the advantage of the Italian company. Read more

7 Aug 2019

Return of the Supermac’s: Irish chain delivers another blow to McDonald’s 

The EUIPO has partially invalidated McDonald’s EU trademarks for the ‘Mc’ prefix. As with the recent BIG MAC decision, McDonald’s was deemed to have submitted insufficient evidence to claim use for the disputed marks. Read more

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Trending

1

Branding lessons from Barbie: interview with professor of law Dan Hunter 

2

Poland’s economy continues to exhibit remarkable growth, but can local brands keep up?

3

Five counterfeit hotspots that you must be aware of in Cyprus

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USPTO warns of ‘bad actors’ as filing levels return to normal

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Despite backlash, Ferrari may benefit from its spat with designer Philipp Plein

Find an expert

Gregor Bühler
Partner
Zurich, Switzerland
Homburger AG
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