Analysis

Creative trademark strategies are essential for brands venturing into newly-legalised US marijuana markets

Both Coca-Cola and musician Jimmy Buffett have been linked with marijuana brand partnerships over the past week. Such deals pose significant trademark difficulties, but there may be workaround strategies available. 

Creative trademark strategies are essential for brands venturing into newly-legalised US marijuana markets
18 Sep 2018

How the evolution of ‘trademark counsel’ to ‘brand professionals’ will significantly impact service demands

In this week’s opinion column, we consider how law firms can future-proof their trademark practices.

17 Sep 2018

Trademark litigation remains flat in 2018 as Central District of California continues to be ‘go-to’ venue

Lex Machina has reported that 2,745 trademark litigation cases have been filed in the US so far this year. Therefore, the projected total for year-end  indicates that filings will remain flat after a near-decade of decline.

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21 Sep 2018

Success for Apple as General Court finds certain degree of similarity between APO and APPLE marks

In a victory for Apple Inc, the EU General Court has annulled a decision of the Fourth Board of Appeal of the EUIPO in which the latter had found that the figurative mark APO was not similar to Apple’s earlier marks. Read more

21 Sep 2018

New design registration regime: what you need to know 

The new Israeli Design Law recently came into effect, and the Ministry of Justice subsequently published draft new Design Regulations. This update reviews the key points concerning the filing, examination and registration process. Read more

20 Sep 2018

Bad news for tourism and souvenir industry as CJEU rules that castle name can be registered as trademark

In a ruling that sits uncomfortably with its earlier decision in Windsurfing Chiemsee, the Court of Justice of the European Union has rejected the notion that the name of a famous Bavarian castle could serve as a geographic indication for the relevant goods/services.  Read more

20 Sep 2018

Tread lightly: tyre company’s use of competitor’s mould is reverse passing off

In a case involving sellers of industrial tyres, the US Court of Appeals for the Ninth Circuit has confirmed that the defendant’s use of a competitor’s tyre mould to make its own tyres created a likelihood of confusion. Read more

19 Sep 2018

Delhi High Court: defendants copied all main features of Marico’s PARACHUTE-branded product

In Marico Limited v Kumar, the Delhi High Court has restrained the defendants from infringing Marico Limited’s IP rights in its PARACHUTE-branded coconut oil. Read more

18 Sep 2018

Federal Court once again affirms that "use" of a trademark does not require bricks and mortar for non-Canadian businesses  

In Hilton Worldwide v Miller Thomson, the Federal Court of Canada has held that providing “hotel services” does not require a physical hotel in Canada to constitute “use” of a trademark in the country. Read more

18 Sep 2018

Kazakhstan amends IP legislation - key changes highlighted

Various amendments to the IP legislation have come into force in Kazakhstan. This update highlights the most significant changes brought about by the amendments. Read more

17 Sep 2018

A monster left licking its wounds: Monster Energy suffers three opposition losses

Energy drink giant Monster Energy has been involved in three trademark oppositions in New Zealand so far this year, and was unsuccessful in all three. Read more

17 Sep 2018

New rules for non-use cancellation actions: what you need to know

The Brazilian Patent and Trademark Office has issued Technical Note No 01/2018, which establishes new rules for non-use cancellation actions. This update highlights the key points for mark owners and petitioners. Read more

14 Sep 2018

Panasonic wins passing-off case concerning packaging and product designs

In a landmark decision, the Thai Supreme Court has held that the defendant was passing off its batteries as those of Panasonic, even though it sold its products under a different trademark. Read more

14 Sep 2018

UDRP complainants beware: panel may conduct further research

A recent decision under the UDRP highlights that complainants should carefully carry out research and consider the evidence they provide to satisfy the second and third requirements of the UDRP, as the panel may conduct further research. Read more

14 Sep 2018

“There is no one-size-fits-all approach to enforcement” – exclusive interview with Mars Inc’s Sophie Anger

In an in-depth discussion with Sophie Anger, associate general counsel of marketing properties for the global petcare unit of Mars Incorporated, she offers enforcement tips, explains how efficiency is her guiding principle, and much more. Read more

13 Sep 2018

Massimo Osti v Global Design: should a claim be issued in the IPEC or the High Court?  

The decision in Massimo Osti v Global Design shows that the choice of bringing a case in the Intellectual Property Enterprise Court or the High Court of England and Wales is not always within the control of the claimant. Read more

13 Sep 2018

IP office gets new name and undergoes structural changes - what you need to know

Vietnam’s Ministry of Science and Technology has issued a new Regulation on the Organisation and Operation of the National Office of Intellectual Property, which introduced a new name for the office and unveiled a new organisational structure. Read more

13 Sep 2018

South African IPO recovers CIPRO domain after cybersecurity concerns

Fears over potential phishing attacks were sparked last month when it was revealed that a domain name previously used by South Africa's Companies and Intellectual Property Commission had been purchased by an individual in Mexico. Read more

12 Sep 2018

Big ticket win for respondent in ‘ticketcompare.com’ case

A WIPO panel has denied the transfer of a precious ‘.com’ domain name consisting of a generic term under the UDRP, and made a finding of reverse domain name hijacking against the complainant. Read more

12 Sep 2018

New incentives for registration of collective trademarks – government hoping to boost competitiveness

Starting on 5 September 2018, and for a duration of one year, certain communities, organisations and businesses will be exonerated from the payment of the official fee for the registration of collective marks in Peru. Read more

11 Sep 2018

AUTOKEY marks found to have acquired secondary meaning as badge of origin

The Irish controller for patents, designs and trademarks has found that, although two AUTOKEY marks were liable to be refused under two different sections of the Trademarks Act, the marks had acquired distinctiveness through use. Read more

11 Sep 2018

Why UDRP complainants should never overstate their case

A recent decision under the UDRP shows that it is crucial to provide the necessary evidence to support the submissions in the complaint and never to overstate one's case. Read more

11 Sep 2018

Don’t underestimate the rise of Chinese brands (and the impact for all rights holders)

In our latest opinion piece, we reflect on the scale of the Chinese government's brand incubation drive, and how this ambitious project is one that will have consequence for all rights holders - no matter where in the world they are located. Read more

10 Sep 2018

Victory for mark owners as CJEU rules that they can prevent de-branding of imported goods

In Mitsubishi Shoji Kaisha Ltd v Duma Forklifts NV, the Court of Justice of the European Union has considered the issue of de-branding and re-branding of goods imported into the European Union. Read more

10 Sep 2018

Supreme Court ends long-running debate: grace period from Association Agreement directly applicable in Ukraine

Ukraine’s Supreme Court has upheld decisions of the lower courts finding that the EU-Ukraine Association Agreement - which provides for a five-year non-use grace period, as opposed to three years under the national law - applied with direct effect. Read more

10 Sep 2018

Where did it all go wrong in the WTO plain-packaging dispute?

The World Trade Organisation’s panel report in the cases brought against Australia’s plain-packaging regime is difficult reading – and some of its key arguments are without merit. Read more

7 Sep 2018

CJEU offers valuable guidance for respondents to tenders involving trademarks

The Court of Justice of the European Union has delivered a ruling on what stage of the procurement process bidders must demonstrate compliance with the technical specifications of a tender. Read more

7 Sep 2018

Letter marks: Supreme Court provides guidance on distinctiveness

The Thai Supreme Court has held that a figurative mark consisting of the letters ‘B’, ‘F’ and ‘t’ was sufficiently distinctive to be registrable under the Trademark Act.  Read more

7 Sep 2018

“GDPR has made brand rights enforcement online much more difficult” – exclusive interview with ESPN’s Allison Cantor

World Trademark Review speaks with Allison Cantor, principal counsel at ESPN, about how she balances her role as the company’s sole in-house trademark counsel with her other commitments, the difficulties posed by the implementation of GDPR, and much more. Read more

7 Sep 2018

The fall of the own-name defence

The ability to raise the own-name defence in Europe is about to come to an end. This article examines the consequences of recent own-name legislative changes for businesses in Europe. Read more

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Find an expert

Sarah Hadland
Director
Wallingford, United Kingdom
SH & Associates IP Ltd