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Analysis

Uber’s loss of its London license a reminder of the importance of brand reputation: data analysis

Safety is the most critical component of brand building in the ride-hailing app environment, but hinging success on such a volatile factor could be risky

Uber’s loss of its London license a reminder of the importance of brand reputation: data analysis
13 Dec 2019

“Europe is not yet prepared” – reaction as Cannabis mark ruled unregistrable by EU court 

The General Court of the European Union has ruled against a trademark due to its implied links to illegal narcotics. Industry experts give their reaction.

13 Dec 2019

Boris, Brexit and brands – what the UK election result means for trademark owners

The Conservative Party has landed a significant victory in the UK general election, with a majority that essentially confirms that Brexit will occur at the end of January 2020. The result could have significant implications for IP owners.

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13 Dec 2019

UDRP: do not gamble on refiling

A UDRP decision concerning the domain names ‘casinoseminole.com’, ‘seminolecasino.com’ and ‘seminolegaming.com’ sheds light on the complicated matter of refiling, especially in cases of an apparent transfer of control. Read more

13 Dec 2019

General Court confirms similarity of BILLA and BILLABONG marks

In a victory for the owner of the BILLABONG mark, the EU General Court has confirmed that there was a likelihood of confusion between the marks BILLA and BILLABONG with regard to certain goods and services. Read more

12 Dec 2019

Meme theft: how legal should engage with social media marketing to handle repost crises

Social media marketing departments are reposting UGC on their own sites often with little or no credit to the original creator, which should ring alarm bells for trademark counsel. Read more

12 Dec 2019

Five counterfeit hotspots in Poland that brand owners must be aware of

In the next edition of our series on markets around the world that reportedly engage in the sale of fake goods, we head to Poland. Read more

12 Dec 2019

Going undercover – tips for monitoring the Central Asia counterfeiting market

As the most developed region in Central Asia, Kazakhstan serves as a transit point for counterfeit goods that are produced in China and trafficked to Russia and then Europe. However, there are legal measures that brand owners can take while awaiting improvements to the existing IP legislation. Read more

12 Dec 2019

Supreme Court: payments attributed to brand compliance guidance must be added to goods’ value for import duty purposes

In a case of first impression, the Israeli Supreme Court has held that royalties paid by licensees and distributors with respect to the marketing of goods bearing well-known fashion trademarks were deemed part of the goods’ value for customs purposes. Read more

12 Dec 2019

General Court provides guidance on use of mark in form differing in elements which do not alter its distinctive character

In KA Schmersal Holding GmbH & Co KG v EUIPO, the EU General Court has confirmed that there was a likelihood of confusion between the mark TEC.NICUM and the earlier mark TECNIUM for services in Class 42. Read more

11 Dec 2019

As Congress investigates USPTO trademark fraud, research finds suspicious specimens continue

A new investigation from WTR finds that the problem of suspicious specimens persists – with legal representatives providing eye-opening accounts of the challenge faced by both IP practitioners and examining attorneys. Read more

11 Dec 2019

USMCA given green light; significant GI changes now a step closer to reality

The Canadian, Mexican and US governments have signed an amended version of the USMCA, meaning that ratification is a significant step closer – with the deal highlighting what IP concessions the Trump Administration will expect in future trade deals. Read more

11 Dec 2019

Federal Administrative Court confirms that figurative mark containing the word ‘Paris’ is deceptive

In a blow to German supermarket chain Lidl, the Swiss Federal Administrative Court has confirmed that the figurative mark ESMARA SEE YOU IN PARIS was deceptive. Read more

11 Dec 2019

DERMOFAES v DERMOWAS: the role of weakly distinctive elements and the public’s level of attention in assessing likelihood of confusion

The EU General Court has confirmed that there is no likelihood of confusion between the mark DERMOFAES ATOPIMED in Classes 1, 3 and 5, and the earlier word mark DERMOWAS in Classes 3 and 5. Read more

10 Dec 2019

Geo-blocking or global take-down? Facebook keeps the question alive in Indian dispute

We highlight the implications of a developing dispute in India, where a court recently issued a blocking order directing Facebook, Google, YouTube and Twitter to take down and remove, on a global basis, particular defamatory videos. Read more

10 Dec 2019

As ad agencies and brands clash over IP creation rights, counsel should be prepared for pushback

Conflict has grown between advertising agencies and clients over a growing trend to withhold payment and IP ownership from rejected pitches. With disputes potentially spanning copyright and brands, it is a tension that trademark counsel should be prepared for. Read more

10 Dec 2019

Domain name registration justified by prior business relationship

A recent decision concerning the domain name ‘hawkeco.com’ under the UDRP shows that trademark owners should contractually exclude any ambiguity as to their implicit consent for a third party to register a domain name incorporating their trademark. Read more

10 Dec 2019

Are KITCHEN HEROES K and HERO similar? Lithuanian IP office and EUIPO come to different conclusions  

Hero AG’s opposition against the mark KITCHEN HEROES K based on its earlier mark HERO has had different outcomes in Lithuania and at the European Union Intellectual Property Office. Read more

9 Dec 2019

Luxury brands and enhanced IP protection: lessons from Claridge’s and Prada disputes

Experts from Powell Gilbert consider two recent cases involving owners of luxury brands that serve to clarify the scope of protection of premium brands. Read more

9 Dec 2019

Five counterfeit hotspots in Greece that brand owners should be aware of

In the latest edition of our series on markets around the world that reportedly engage in the trade of fake goods, we head to the historical landscapes of Greece. Read more

9 Dec 2019

Confusion over non-use and assignment of associated marks in East Africa

Rights holders in Kenya, Tanzania and Uganda are reaping the benefits of associated trademarks. However, a lack of relevant case law means that legal provisions concerning non-use and assignment of such marks are leaving many scratching their heads. Read more

9 Dec 2019

CJEU: all courts with jurisdiction to order provisional measures are competent to order such measures with regard to RCDs

Following a reference for a preliminary ruling by the procurator general of the Supreme Court of the Netherlands, the Court of Justice of the European Union has put an end to uncertainty regarding the interpretation of Article 90(1) of Regulation 6/2002. Read more

9 Dec 2019

Using the new online IP filing system in Indonesia – what you need to know

Following the launch of the new mandatory e-filing system, all new IP applications must be filed online and it is no longer possible to file IP applications manually through the filing counter at the Indonesian Directorate General of Intellectual Property.   Read more

6 Dec 2019

Fleet Feet’s court victory against Nike highlights challenges in using and protecting slogan marks

A ruling centred on Nike’s use of the ‘Sport Changes Everything’ slogan highlights the conundrum over when and where to seek registered protection for slogans, and the different approaches adopted by IP offices to ad campaign slogans. Read more

6 Dec 2019

Alibaba's DOUBLE 11 trademark: JD.com sues China's IP authority

JD.com is suing the China National IP Agency following the invalidation of five DOUBLE 11 marks. Alibaba, the third party in this case, argues that DOUBLE 11 – a reference to Singles’ Day in China – was created and used by the company as a trademark.   Read more

6 Dec 2019

Providence Island black crab protected as denomination of origin

The black crab of the Island of Providence has been granted protection as a denomination of origin by a decision of the Superintendence of Industry and Commerce. It is the first time that a product of the Colombian archipelago of San Andrés, Providence and Santa Catalina has received such protection.  Read more

5 Dec 2019

Five counterfeit hotspots in Russia that brand owners must be aware of 

In the latest edition of our series on markets around the world that are reportedly notorious for the sale of counterfeit goods, we head to Russia. Read more

5 Dec 2019

Exhaustion of trademark rights: Barcelona Court of Appeal rules in Schweppes case

The Barcelona Court of Appeal has held that Red Paralela had infringed Schweppes' Spanish SCHWEPPES marks by importing and commercialising Schweppes-branded tonics in Spain which had been manufactured in the United Kingdom by Coca-Cola, the owner of the UK SCHWEPPES marks. Read more

5 Dec 2019

General Court finds that “coffee products” are similar to edible items in Class 30

The EU General Court has confirmed that there was a likelihood of confusion between the mark HAPPY MORENO CHOCO and Aldi’s earlier MORENO mark for Class 30 goods. Read more

4 Dec 2019

The dominance of Class 9: is it time for a radical overhaul of the Nice Classification system?

A detailed look at how the use of Class 9 continues to dominate at trademark offices across the globe highlights why there needs to be significant changes to the Nice trademark classification system to meet the challenges of the modern world. Read more

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Fleet Feet’s court victory against Nike highlights challenges in using and protecting slogan marks

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Luxury brands and enhanced IP protection: lessons from Claridge’s and Prada disputes

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Monica Riva Talley
Director
Washington DC, United States
Sterne, Kessler, Goldstein & Fox PLLC
View full biography
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