Analysis

“Online platforms are benefiting from counterfeits”: Exclusive interview with American National Red Cross’ Allison Leader

As part of our ongoing series of interviews with WTR 300-featured corporate trademark counsel, we spoke to Allison Leader about the challenges she faces at American National Red Cross and what it takes to successfully manage brand rights in the not-for-profit sector.

“Online platforms are benefiting from counterfeits”: Exclusive interview with American National Red Cross’ Allison Leader
14 Nov 2018

Corsearch purchases Yellow Brand Protection in latest trademark services sector acquisition

Corsearch has acquired Yellow Brand Protection for an undisclosed sum, WTR can exclusively reveal. The deal results in new online anti-counterfeiting and brand protection services falling under the Corsearch umbrella.

11 Nov 2018

Cannabis trademarks rocket, but how long will Canada lead the way? – exclusive data analysis

An analysis of Canadian trademark filings illustrates a sharp rise of applications in the cannabis sector; could that spike be replicated in the US in the future?

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Today

Leading hotel management company prevails in opposition proceedings against CAFE FOUR SEASONS

Four Seasons Hotels (Barbados) Ltd has been successful in opposition proceedings against the Lithuanian figurative trademark CAFE FOUR SEASONS for food and drink services in Class 43. Read more

Today

General Court: black-and-white registration certificate does not satisfy requirements for representation of earlier figurative mark   

In opposition proceedings between Aldi Einkauf and Aldo Supermarkets, the EU General Court has held that submitting a copy of a national registration certificate in black and white did not satisfy the conditions governing the representation of the earlier mark. Read more

14 Nov 2018

General Court: disclosure of earlier design cannot be proved by means of probabilities or suppositions

The decision of the EU General Court in Mamas and Papas Ltd v EUIPO, which concerned a registered Community design representing a cot bumper, shows that the parties should present their best evidence in proceedings not only before the court, but also before the EUIPO. Read more

14 Nov 2018

Should government act as defendant when private party appeals decision to cancel mark?

According to a proposal made by Norway’s Department of Justice in the context of the implementation of Directive 2017/2436, the government would no longer act as the counterparty when a decision to cancel a trademark is appealed to the district court. Read more

13 Nov 2018

UDRP proceedings: non-response does not mean transfer

A UDRP panel has refused to order the transfer of a domain name that partly incorporated the complainant's mark because the complainant failed to prove that the respondent had registered or used the domain name in bad faith - even though the latter did not respond. Read more

13 Nov 2018

Victory for Volvo as Patent and Market Court takes a stance on bad-faith applications

A recent case involving the registration by Green Stapler of the name of Volvo's "Made by Sweden" campaign shows how the Swedish Patent and Market Court will assess whether an applicant has acted in bad faith. Read more

12 Nov 2018

Preliminary draft Trademark Act: invalidity and cancellation proceedings

Following the approval of a preliminary draft law partially amending the Spanish Trademark Act in order to incorporate Directive 2015/2436, various consulting bodies have given their opinions on the draft text, highlighting certain aspects which they believed could be improved. Read more

12 Nov 2018

General Court: name of spa town eligible for registration for mineral waters

The EU General Court has annulled a decision of the EUIPO in which the latter had found that the mark DEVIN - the name of a Bulgarian spa town - for mineral waters was descriptive of the geographical origin of the goods. Read more

9 Nov 2018

Important changes to Trademarks Act and Rules due January 2019 – what you need to know

The UK Trademarks Act and Rules are due to change following the implementation by the UK Intellectual Property Office of Directive 2015/2436. This update highlights the various changes due to come into effect in January 2019. Read more

9 Nov 2018

Rights holders beware: criminal raid action deemed to be act of unfair competition

In a ground-breaking decision, the Turkish Court of Appeals has held that a criminal raid action constituted an act of unfair competition and that the complainant should pay compensation to the defendant for damages incurred due to the raid. Read more

9 Nov 2018

Why Canada’s unexpected trademark reforms are good news for brand owners

Trademark reforms proposed by the Canadian government are positive for brand owners, with mechanisms to tackle trademark squatting and modernised dispute resolution proceedings. Read more

8 Nov 2018

“The role of brand protection is expanding” – technology and security risks causing strategies to evolve

A new study highlights the growing need for brand protection practitioners to work more closely with IT and security departments. Read more

8 Nov 2018

CJEU confirms that categorisation as "colour mark" at time of filing is relevant when assessing validity

The Court of Justice of the European Union has confirmed that the categorisation of a mark as a “colour mark” at the point of filing is relevant when assessing its validity. Read more

8 Nov 2018

TTAB dismisses NEW MAN cancellation petitions, finding no abandonment despite six years of non-use

The US Trademark Trial and Appeal Board has dismissed petitions for the cancellation of four NEW MAN marks for clothing, even though Newman only put the marks into use six years after acquiring them, and then only on a minimal basis. Read more

7 Nov 2018

Hasbro retains MONOPOLY trademark

The registrar of the UK Intellectual Property Office has dismissed an application to revoke Hasbro’s trademark registration for MONOPOLY on the ground that the mark had not been put to genuine use. Read more

7 Nov 2018

New drafts amendments to patent, utility model, design and trademark legislation – what you need to know

The Ukrainian Ministry of Economic Development and Trade has released new draft amendments to the patent, utility model, design and trademark legislation for public review. Read more

7 Nov 2018

Compulsory conundrum: debate surrounds mandatory mediation for IP disputes

The introduction of mandatory mediation in Greece has faced criticism which eventually led to its suspension; a move that has left question marks over whether wider adoption of such a model is viable. Read more

6 Nov 2018

Well-known healer’s name and alias protected to the benefit of his heirs

The Board of Appeal of Estonia has upheld oppositions filed by the heirs of well-known healer and writer Aleksander Heintalu (also known as Vigala Sass) against the registration of ALEKSANDER HEINTALU and VIGALA SASS. Read more

6 Nov 2018

Who is allowed to promote a MINI coffee machine and MINI XL coffee mugs?

Car manufacturer BMW has successfully challenged coffee retailer Tchibo’s use of ‘MINI’ for coffee machines and coffee mugs before the Frankfurt District Court. Read more

5 Nov 2018

What trademark owners can learn from the Federal Circuit’s Converse decision

We look at the key takeaways from the decision by the US Court of Appeals for the Federal Circuit to throw out the 2016 ITC ruling that Converse’s Chuck Taylor trade dress rights are invalid.  Read more

5 Nov 2018

CONVERSE CHUCK TAYLOR ALL STAR recognised as well-known trademark

The Court of Appeal of Peru has recognised the notoriety of CONVERSE CHUCK TAYLOR ALL STAR, in application of Articles 224 and 136(h) of Andean Community Decision 486. Read more

5 Nov 2018

 "Close call" involving recurrent online sales triggers minimum contacts, specific jurisdiction

The US Court of Appeals for the First Circuit has confirmed that a foreign company subjected itself to specific personal jurisdiction in a trademark dispute where that company had sizeable continued online sales to US customers. Read more

2 Nov 2018

Development of e-filing in Thailand: benefits of new system explained

Earlier this year Thailand’s Department of Intellectual Property launched a new e-filing system for trademark, patent, design and copyright applications. This update reviews the benefits of using the new e-filing system. Read more

2 Nov 2018

Bacardi’s application for 42 BELOW sunk by non-registered national trademark

The EU General Court has confirmed that there was a likelihood of confusion between Bacardi’s mark 42 BELOW for alcoholic beverages and the earlier non-registered mark VODKA 42 used in the Czech Republic and Slovakia for the same goods. Read more

2 Nov 2018

Brand valuation: deciphering the trends and what it means for businesses

We analyse current brand valuation trends and explain why trademark counsel should pay more attention to the rapidly growing valuation industry. Read more

1 Nov 2018

Brazil edges forward with Madrid Protocol, but IP uncertainty follows election of Bolsonaro

With far-right candidate Jair Bolsonaro’s victory in last week’s general election, local experts tell WTR that the new government could “cause complications” for Brazil's accession to the Madrid Protocol. Read more

1 Nov 2018

New option available to reduce time between filing and publication of trademark applications

A new option is available in Colombia to reduce the prosecution time of trademark applications. In certain circumstances, it is now possible to skip the formal examination of the products/services covered by the application prior to its publication. Read more

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