Analysis: Legal

An “emphatic win" as Sky emerges victorious in latest round of dispute with SkyKick

The Court of Appeal hands down judgment in the latest round of the dispute between Sky and SkyKick, with the latter vowing to fight on with an appeal to the UK Supreme Court.

An “emphatic win" as Sky emerges victorious in latest round of dispute with SkyKick
Why design patents are such a potent weapon for US enforcement
22 Jul 2021

Why design patents are such a potent weapon for US enforcement

The Long Read: Applications for US design patents have increased by 50% over the past decade. Debevoise & Plimpton’s Megan Bannigan, Justin Ferrone and Anna Rennich analyse why so many brand owners are taking this route to bypass trade dress obstacles.

The case for consumers: call for legal reform to provide standing to trademark stakeholders
21 Jul 2021

The case for consumers: call for legal reform to provide standing to trademark stakeholders

A new study has found that the current Lanham Act “may not be a perfect fit to all sectors of the market”, especially in situations when a consumer’s reliance on a trademark may cause them reputational or financial harm.

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26 Jul 2021

Significant raid carried out against importer of fake mobile phone accessories

More than 15,000 fake mobile phone accessories - bearing brands such as Apple, Huawei, Samsung and Xiaomi - have been seized following a huge raid in a commercial establishment and warehouse located in Downtown Lima. Read more

23 Jul 2021

Domain name disputes in Thailand: how to deal with the pitfalls of the country’s domain registration policy

Domain name disputes sometimes arise between trademark owners and Thai-registered companies that exploit the gaps in Thailand’s current domain registration policy. As demonstrated in a recent dispute, court proceedings are not the only option for mark owners. Read more

22 Jul 2021

IP Vietnam implements more flexible requirements regarding authorised signatories in IP procedures

Meeting the requirements set forth by Notice No 13822 with regard to authorised signatories has proven challenging - or even impossible - for many overseas IP rights holders. IP Vietnam has now relaxed these requirements by issuing Notice No 6959. Read more

20 Jul 2021

Tiffany & Co settles infringement dispute with Costco, ending eight-year battle

A court filing lodged yesterday confirms that the case has been voluntarily dismissed with prejudice. Read more

19 Jul 2021

Russian Champagne - a real Sham(panskoye)? New Russian law redefines Champagne and causes a lot of fuss over fizz

This update looks at the implications of the shock announcement from Russia concerning changes to the legal definitions of ‘Champagne’ and ‘Cognac’ in the country. Read more

16 Jul 2021

Neuroscience and IP law: could data from fMRI scans revolutionise trademark litigation?

A groundbreaking study has combined advanced neuroscience tools with common trademark law questions and could reshape disputes invoking the reasonable person. Read more

15 Jul 2021

Trademark prosecution in China: statistics and trends analysed

Statistics recently released by the CNIPA signal a downward trend in terms of the approval rate. In contrast, securing the cancellation or invalidation of a registered trademark has become increasingly easy in China. Read more

14 Jul 2021

Artificial intelligence could revolutionise understanding of trademark genericism, groundbreaking study claims

A new study has identified an artificial intelligence approach to establish whether a trademark is generic or distinctive, with the academic behind the research telling WTR why it could lead to invaluable business intelligence. Read more

14 Jul 2021

Sun sets on Sunrise B as AdultBlock rises to the occasion

Sunrise B, the programme that enabled trademark holders to block their brands for a period of 10 years in the adult-themed ‘.xxx’ TLD, is set to come to an end. In its place, the ‘.xxx’ Registry is introducing two levels of protection: AdultBlock and AdultBlock+. Read more

14 Jul 2021

Foreign companies as IP holders in Ecuador

Third-party appropriation of internationally famous trademarks is a problematic phenomenon in Ecuador. Some clarification by the Court of Justice of the Andean Community would arguably be welcome. Read more

12 Jul 2021

CIS members sign new agreement on prevention and repression of the use of false trademarks and GIs

The CIS member states have signed the Agreement on Cooperation in the Prevention and Repression of the Use of False Trademarks and Geographical Indications, which will replace the existing agreement dated 4 June 1999. Read more

8 Jul 2021

New CNIPA and SAMR guiding opinions signal better protection for GIs

The China National Intellectual Property Administration and the State Administration for Market Regulation have published guiding opinions on further strengthening the protection of geographical indications, which came into effect on 21 May 2021. Read more

8 Jul 2021

Kenya and Uganda update: deadlines that trademark owners should be aware of

Some deadlines are fast approaching for owners of expired trademark registrations in Kenya and Uganda. Read more

2 Jul 2021

A new chapter at the CNIPA: cracking down on trademark squatting

The CNIPA has released a revised draft of the Trademark Adjudication and Examination Criteria, which introduces a new chapter on the examination of “bad-faith trademark registrations not for the purpose of genuine use”. Read more

30 Jun 2021

“A long time coming” – experts praise Canadian government’s creation of independent regulator for IP agents

The government of Canada launches the ‘College of Patent Agents and Trademark Agents’, with local experts calling it a "welcome development" - although there are concerns that it could “add to the cost of practising”. Read more

25 Jun 2021

Wrongful versus fair use in India: how a news outlet spat reinforced the boundaries

A recent dispute between two Indian media companies over the use of trademarks in news reporting has reinforced the country’s approach to fair use. Read more

25 Jun 2021

Geographical indications in Venezuela: latest developments

Although Venezuela has withdrawn from the Andean Community, which is having a negative impact on filing GIs, recent developments in the procedure for protecting GIs suggest that the practice may be on its way up. Read more

24 Jun 2021

Proposed amendments: a wider protection for GIs and clearer rules regarding the registration of trademarks and company names in bad faith

Proposed amendments to the Swedish Trademarks Act aim to bring it into line with the CJEU’s latest case law on bad faith, and to provide enhanced protection to geographical indications and designations of origin. Read more

22 Jun 2021

“The NCAA is not above the law”: Supreme Court opinion on amateurism in college sports set to intensify NIL rights debate

The US Supreme Court has ruled against the NCAA and decided that a district court injunction pertaining to its rules limiting the education-related benefits that schools make available to student athletes is consistent with established antitrust principles. Read more

21 Jun 2021

Russian v Eurasian design systems: comparison of procedures and fees

The Eurasian Patent Office started accepting Eurasian industrial design applications on 1 June 2021. This update highlights the differences between filing a design via the national or Eurasian route, as well as the differences in official fees. Read more

21 Jun 2021

“This is a case about intention”: Banksy’s trademark troubles continue as EUIPO invalidates four more marks

The EUIPO Cancellation Division has declared four of street artist Banksy’s trademarks invalid, hitting out at his efforts to circumvent the law”. Read more

18 Jun 2021

Supreme People’s Court issues new interpretation on punitive damages in IP cases

The Chinese Supreme People’s Court’s recently issued interpretation, which provides clarity and consistency as to how punitive damages can be applied and assessed, is expected to act as stronger deterrent against IP infringement. Read more

14 Jun 2021

“The Second Circuit got it right”: FTC decision reversed in trademark agreements dispute

The Second Circuit has reversed a Federal Trade Commission (FTC) decision which held that a series of trademark agreements between online contact lens company 1-800 Contacts and its competitors focusing on keyword advertising restrained competition. Read more

14 Jun 2021

Peruvian Trademark Office: progress and plans for the future

Important achievements include the reduction of the timeframe for resolving cases and the successful implementation of digital tools, and current projects involve search tools using artificial intelligence. Read more

12 Jun 2021

Why the UK could be flooded with cheap imported branded products if post-Brexit exhaustion of rights regime is changed

In this week’s opinion piece, Lee Curtis and Rebecca Field from HGF explain why it is crucially important for brand owners to have their say as part of the UK government's post-Brexit exhaustion of IP rights consultation. Read more

10 Jun 2021

Character brands, mascots and cancel culture: a step-by-step guide to creating, policing, licensing and retirement

The Long Read: Over the past 18 months a number of brands have retired controversial mascots and characters. BakerHostetler’s Robert (“Red”) BG Horowitz runs through the key considerations brand owners should bear in mind if mascots are to stay current, as well as best practice for how to shelve them while retaining control. Read more

10 Jun 2021

Amended trademark regulations come into force: key points highlighted

Uganda's Trademarks (Amendment) Regulations No 9/2021, which came into effect on 14 May 2021, has brought about some welcome changes to the provisions of the Trademark Regulations 2012. Read more

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