Analysis

As the 2020 US presidential race kicks off, few candidates are seeking trademark protection

Research from WTR finds that few candidates for the 2020 US presidential election are seeking registered trademark protection for their campaign branding so far – although some are already being targeted by infringement.

As the 2020 US presidential race kicks off, few candidates are seeking trademark protection
22 Mar 2019

How Mastercard is adapting to the digital era and going sonic – exclusive interview

Even widely known and well-established companies must continuously adapt their brand strategies to suit the changing technological and commercial environment. This is a key concern at Mastercard, whose head of intellectual property Colm Dobbyn and senior IP counsel Francesca Silverman spoke to WTR this week.

21 Mar 2019

European Union to accede to Geneva Act; Brexit uncertainty means United Kingdom poised to become GI battleground

The European Parliament's Legal Affairs Committee has endorsed the European Union acceding to the Geneva Act – a move that could propel the issue of geographical indications back to the top of the trade deal agenda as the United Kingdom looks to its post-Brexit future.  

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Today

UDRP respondent establishes prior registration based on unbroken chain of possession

A decision under the Uniform Domain Name Dispute Resolution Policy illustrates how a respondent may rely on an unbroken chain of ownership of a disputed domain name to establish its original registration/acquisition date.  Read more

Today

Polo logo appeal dismissed: the importance of evidence of use and registrations

The EUIPO Board of Appeal has decided that a declaration of invalidity filed by Style & Taste against Polo/Lauren’s polo logo did not contain sufficient evidence to support the claim. Read more

22 Mar 2019

Review your IP arrangements: IP exemption from competition laws soon to be repealed

Section 51(3) of the Australian Competition and Consumer Act, which exempts conditional licensing or assignment of IP rights from most of the prohibitions on cartel conduct, is due to be repealed. Businesses are strongly urged to review their IP arrangements to ensure that they comply with the competition laws. Read more

22 Mar 2019

General Court upholds rejection of STREAMS trademark application

In DeepMind Technologies Ltd v EUIPO, the EU General Court has confirmed that the mark STREAMS was descriptive of goods and services in Classes 9 and 42 and should be refused under Article 7(1)(c) of EU Regulation 207/2009.  Read more

21 Mar 2019

UDRP: be aware of generic terms

A recent decision under the UDRP highlights that having a trademark, by itself, does not necessarily mean that the trademark holder will succeed in obtaining the transfer of a domain name, even if it identically reproduces such trademark. Read more

21 Mar 2019

General Court: consumers perceive signs as a whole

The EU General Court has dismissed an appeal of the Fifth Board of Appeals’ decision concerning the EU mark VERA GREEN and earlier LAVERA marks. The court held that consumers generally perceive signs as a whole and do not analyse their various details. Read more

20 Mar 2019

Patent Office rejects WHEN IN ICELAND opposition

A recent Icelandic Patent Office decision serves as a useful reminder that the evaluation of similarity as set out in the Trademarks Act should always involve a nuanced comparison of the marks. Read more

19 Mar 2019

‘Funtime’ is over for Trespass

The Intellectual Property Enterprise Court has held that Luen Fat Metal & Plastic Manufactory Co Limited’s UK and EU trademarks for a series of word marks (FUNTIME, FUN TIME and FUN-TIME) are valid and have been infringed. Read more

18 Mar 2019

EUIPO calls for action as study finds fakes make up 3.3% of global trade

A new study from the EUIPO and the OECD has revealed the staggering rise in counterfeit goods being traded around the globe. In response, the executive director of the EUIPO has called for coordinated action. Read more

15 Mar 2019

Plain packaging is a trademark issue, not a tobacco issue – exclusive interview with JT International

Ronald van Tuijl of JT International explains to WTR the distinctive set of trademark challenges that his team faces, what he looks for when enlisting law firms, how plain packaging is affecting his practice, and more. Read more

15 Mar 2019

Chicago Mercantile Exchange v Intercontinental Exchange: exclusively descriptive names are not registrable trademarks

A recent decision of the IP Office of Singapore in invalidity proceedings illustrates that, even if a party is the sole provider of a particular product or service, it does not automatically acquire the right to register the mark covering that product or service. Read more

15 Mar 2019

OAPI announces significant changes to the system

The African Intellectual Property Organisation authorities have announced significant changes to the legislation that underpins the OAPI system, the Bangui Agreement. Read more

15 Mar 2019

What Turkey’s domestic economic difficulties mean for brands and their advisers 

Political and economic circumstances have made it difficult for domestic brands to build value, which could prove to be a setback for future growth. However, this could also create opportunities for law firm practitioners. Read more

14 Mar 2019

LegalForce founder takes aim at USPTO as attorneys come out in support of proposed change to representation rules

While most public comments on the USPTO’s proposed change to representation rules are in support, there is one significant dissenting voice in LegalForce founder Raj Abhyanker. Read more

14 Mar 2019

Imprisonment for breaching injunctions is annulled by Constitutional Court

Turkey’s Constitutional Court has annulled the first sentence of Article 398(1) of the Code of Civil Procedure, which deals with disciplinary imprisonment for acting against a preliminary injunction. Read more

14 Mar 2019

CJEU considers trademarks with common element 'so' and finds likelihood of confusion

When is a single common element sufficient to create a likelihood of confusion? A decision of the Court of Justice of the European Union in a case involving the mark SO’BIO ĒTIC and earlier SO…? marks illustrates the difficulties in answering that question. Read more

13 Mar 2019

Dissenter creates far-right comments section on every website; brands warned of risks

“Free speech social network” Gab recently launched Dissenter, a platform that allows users to add comments on any website domain. Research from WTR finds that corporate homepages are often littered with defamatory comments. Read more

12 Mar 2019

KIPO amends trademark examination guidelines – key changes highlighted

The Korean Intellectual Property Office has amended its trademark examination guidelines, effective as of 1 January 2019. This update reviews the main points of interest for trademark owners and applicants. Read more

12 Mar 2019

Russian IP Court confirms invalidation of BBC’s TOP GEAR mark

In a controversial decision, the Russian IP Court has upheld a Patent and Trademark Office decision which found the British Broadcasting Corporation’s TOP GEAR trademark to be invalid based on the existence of a senior, almost identical mark belonging to a third party. Read more

12 Mar 2019

ICANN delays '.amazon' decision; tech giant's TLD remains in limbo

ICANN has passed a resolution that ends the organisation's efforts to lead a facilitation process aimed at settling a domain name dispute between Amazon and the Amazon Cooperation Treaty Organisation. Read more

11 Mar 2019

China looking to hold accountable not only trademark squatters, but also facilitating agents

The recent publication of a discussion paper seems to signal a stricter approach by the IP authorities to tackle the problem of parties taking unfair advantage of the system in China at the expense of genuine rights holders.    Read more

11 Mar 2019

Blow for Apple as General Court finds that one cannot compare apples with pears

In a blow to US tech giant Apple Inc, the EU General Court has annulled a decision of the EUIPO in which the latter had upheld Apple’s opposition against the registration of the figurative mark PEAR for information and communications technology-related goods and services based on its famous apple logo mark. Read more

8 Mar 2019

New Uzbekistan resolution aims to strengthen enforcement efforts

The Uzbek government has signed a resolution to tackle the urgent issue of trademark squatting of global brands. The resolution makes significant changes to how trademarks are registered and protected in the country. Read more

8 Mar 2019

Victory for Tambrands Inc as third party’s attempt to register TAMPAX mark fails  

The Appeal Division of the Lithuanian State Patent Bureau has upheld an opposition filed by Tambrands Inc, the owner of the TAMPAX mark, against the registration of the mark TAMPAX by a natural person. Read more

8 Mar 2019

From the old to the new: inside Mondelēz’s evolving brand portfolio strategy

The snack giant has traditionally focused on existing famous brands; however, the healthy living trend now presents both challenges and opportunity. Read more

7 Mar 2019

How to manage a Fortune 30 trademark portfolio with a lean team: Phillips 66 exclusive

Managing the trademark portfolio of a Fortune 30 company with a lean in-house team poses a distinctive set of challenges, as Craig Stone, senior IP counsel at oil and gas giant Phillips 66 Company, explains to WTR. Read more

7 Mar 2019

New trademark law enters into force - what you need to know

A new Law on Trademarks, which aims to transpose Directive 2015/2436 into the national legislation, entered into force in Croatia on 15 February 2019. This update highlights the key changes for trademarks owners and applicants. Read more

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Peter Ruess
Founding Partner
Duesseldorf, Germany
Arnold Ruess