Analysis

Brand Tracker: the filing trends of the world’s most valuable brands  

In the first instalment of a new series, we track the trademark filing activity of the world’s most valuable brands – revealing that Mercedes-Benz may be gearing up to launch an AI assistant.

Brand Tracker: the filing trends of the world’s most valuable brands  
24 Jan 2020

US Postal Service, Amazon and Google named most trusted brands for reliability – but consumer priorities are changing

The US Postal Service, Amazon and Google have topped a ranking of the most trusted brands in the United States. But while reliability is key to securing consumer trust, ethical issues are becoming increasingly important. 

23 Jan 2020

Alibaba reveals 2019 IP enforcement data; Siemens, Dyson and Coach among brands joining AACA  

WTR analysed data from Alibaba's latest IP Protection Report, revealing that it has supplied 1,045 IP-related leads to law enforcement authorities in the past 12 months. 

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24 Jan 2020

Court of Appeals refers to "fruits" of trademark infringement in landmark decision

Referring for the first time to the profits - or “fruits” – obtained by the defendant, Argentina’s Federal Civil and Commercial Court of Appeals has imposed the highest-ever amount of damages in a trademark infringement case. Read more

24 Jan 2020

Ukraine amends GI law – what you need to know

Amendments to the Ukrainian Law on Geographical Indications, which bring the national legislation into line with Regulation 1151/2012 on quality schemes for agricultural products and foodstuffs, entered into force on 1 January 2020.   Read more

23 Jan 2020

Blow for Nestlé as General Court finds that it failed to establish reputation of its ONE mark

In Amigüitos pets & life v EUIPO, the General Court has scored one for the little guy against big hitter Nestlé. Read more

23 Jan 2020

When it’s all in the family: reverse confusion not a basis for broad trademark remedies

In Fabick Inc v JFTCO Inc, a trademark dispute originating from a family feud, the US Court of Appeals for the Seventh Circuit has addressed the issue of reverse trademark confusion and the scope of available remedies. Read more

23 Jan 2020

A third of companies admit uncertainty over post-Brexit trademark strategy

A new study has revealed that a third of UK and European businesses remain uncertain of what their trademark registration strategy will be after the UK leaves the European Union. Read more

22 Jan 2020

Baker McKenzie reigns supreme as world’s strongest law firm brand

Acritas has released its annual index of the world's strongest law firm brands. Once again, the top 20 list includes a number of firms with strong trademark practices, many of which feature in the WTR 1000. Read more

22 Jan 2020

No free ticket for toys at the border: BMW successfully defends itself against lawsuit by toy manufacturer

Well-known car manufacturer BMW has successfully defended itself against a lawsuit filed by a toy car manufacturer in Germany. The plaintiff sought an injunction and damages following an allegedly inadmissible seizure of goods at the border. Read more

22 Jan 2020

ARIPO: changes to the Harare and Banjul Protocols

Amendments to the Harare and Banjul Protocols, which were adopted at the African Regional Intellectual Property Organisation's 43rd Administrative Council Meeting in November 2019, came into effect on 1 January 2020. Read more

21 Jan 2020

“UK will become paradise for free riders”: CJEU referral highlights potential Brexit IP schism

Four questions have been referred to the CJEU which could lead to a landmark judgement on a trademark owners’ rights to stop resales. The decision may further enlarge the gulf between the UK and the EU's position on exhaustion post-Brexit. Read more

21 Jan 2020

Sony v EUIPO: when “annulment” really means “annulment”

The EU General Court has annulled a decision of the Fourth Board of Appeal of the EUIPO in revocation proceedings involving Sony’s mark VITA, as the board had failed to fulfil its obligation to hand down a fresh decision on all the relevant issues. Read more

21 Jan 2020

Weeded out of scope: UDRP designed to address specific cybersquatting issues

A recent decision involving the domain name ‘matrixmmj.com’ serves as a reminder that complex disputes, such as those between parties with current or past business relationships, generally fall outside of the UDRP’s scope. Read more

20 Jan 2020

Counterfeit hotspots in Tanzania that brand owners must be aware of

In the latest instalment in our regular series on marketplaces around the world that are reportedly notorious for being counterfeit havens, we head to the African nation of Tanzania. Read more

20 Jan 2020

Edible tags aim to tackle counterfeit medicines, but come with implementation considerations

Research from Purdue University has produced an edible security tag for pharmaceuticals in an effort to stem the flow of counterfeit medicines. Will costs overrule invention when it comes to the tag’s implementation into the market? Read more

20 Jan 2020

BBC recovers its TOP GEAR trademark after two-year battle

The Russian Intellectual Property Court has overturned its earlier decision in a case involving the invalidation of the British Broadcasting Corporation’s TOP GEAR trademark. Read more

20 Jan 2020

Nivea - recognise the blue?

The dispute between Unilever and Beiersdorf over the latter’s abstract colour mark for its ‘Nivea Blue’, which lasted for over a decade, has finally come to an end. Read more

17 Jan 2020

Siemens’ controversial coal mine contract has put brand at risk of greenwashing accusations

The German conglomerate has portrayed itself as a steward of sustainability, but when it comes to corporate social responsibility, it’s an all or nothing game as this week’s coal mine contract backlash illustrates. Read more

17 Jan 2020

R&D investor study finds benchmarking, not multi-dimensional portfolios, a key factor in market value

A study of corporate R&D investors has found that while some companies place significant value on IP portfolios that include a combination of rights, markets grant higher premiums to those that are more innovative than their competitors. Read more

17 Jan 2020

Is RING distinctive for doorbells and motion sensors?

In a blow to Amazon Technologies Inc, the EU General Court has confirmed that the figurative mark RING was descriptive in relation to doorbells, motion sensors and monitoring equipment. Read more

17 Jan 2020

‘Lotso’ more than non-exclusive licensor-licensee relationship needed for personal jurisdiction  

In Diece-Lisa Industries Inc v Disney Enterprises Inc, the US Court of Appeals for the Fifth Circuit has held that jurisdiction over the licensees does not extend personal jurisdiction to the licensor where the latter has no additional contacts with the forum. Read more

16 Jan 2020

How the amicus briefs could sway the US Supreme Court in anticipated ‘booking.com’ ruling

Three amicus curiae briefs have been delivered to the US Supreme Court ahead of its long-anticipated ruling in USPTO v Booking.com. WTR spoke to two experts to see how these briefs may influence the United States' highest court. Read more

16 Jan 2020

Changes to customs enforcement of IP rights - key points highlighted

The amendments to Ukraine’s Customs Code related to customs enforcement of IP rights entered into force on 14 November 2019. The amending law, which is modelled after Regulation 608/2013, aims to bring Ukrainian legislation into line with EU standards. Read more

16 Jan 2020

IP Office overturns problematic lower-instance decision on recognition of English-language terms

In a victory for US media company Discovery Communications LLC, the Ecuadorian IP Office has overturned its prior finding that the English terms ‘animal’ and ‘planet’ would not be easily understood by the general Ecuadorian public.   Read more

16 Jan 2020

Extinction Rebellion’s terror group classification shines spotlight on brand relationships with causes

Although the listing was only temporary for Extinction Rebellion, the incident serves as a reminder of the nuances that come into play when a brand aligns with political movements. Read more

15 Jan 2020

What rights holders need to know about WeChat’s plans for the future

Last week in Guangzhou, Tencent hosted its 2020 WeChat Open Class Pro event, in which it provided a glimpse into the platform’s future plans, many of which are important for brand protection professionals to know. Read more

15 Jan 2020

Analysis and takeaways as defence preclusion is considered in US Supreme Court hearing

In this guest analysis, K&L Gates partner Susan Kayser charts the decades-long trademark dispute between Lucky Brand Dungarees and Marcel Fashions Group that led up to the highest US court accepting certiorari for the case. Read more

15 Jan 2020

General Court confirms lack of likelihood of confusion between CRYSTAL and CRISTAL

In Super bock group v EUIPO, the EU General Court has confirmed that there was no likelihood of confusion between the mark CRYSTAL for non-alcoholic beverages and foodstuffs in Class 30 and the earlier Portuguese mark CRISTAL for beer in Class 32. Read more

15 Jan 2020

UDRP: the importance of full disclosure

A recent UDRP decision involving the domain name ‘breakforthcanada.com’ illustrates the importance of disclosing any relationship between the parties and mentioning any ongoing litigation. Read more

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Jorge Cruz
Founding Partner
Lisbon, Portugal
J Pereira da Cruz SA