Analysis: Legal

“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.

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

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.

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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

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

13 Jan 2020

USPTO to re-allow PO boxes on trademark applications following privacy backlash

The USPTO is facing continued criticism over new rules that require trademark applicants to submit their domicile street address. In response, the registry reveals plans to re-introduce the ability for applicants to use PO boxes. Read more

10 Jan 2020

New law on trademarks and GIs brings important changes

Bulgaria's new law on trademarks and geographical indications entered into force on 17 December 2019. It brings significant changes to certain aspects of substantive and procedural law, including new absolute and relative grounds for refusal and cancellation. Read more

9 Jan 2020

Increase in ‘blending’ trademarks predicted as companies seek brand edge

A new research paper has scrutinised the strategy of blending words into brand names, concluding that such a strategy could increase because “the supply of effective trademark is not inexhaustible”. Read more

9 Jan 2020

Over 3,000 units of fake spirits and alcoholic beverages seized before end-of-year festivities

On 10 December 2019 the Peruvian National Police, through its IP crime division, seized over 3,000 bottles of suspected counterfeit spirits and alcoholic beverages. Read more

8 Jan 2020

The risk factor in religious marks: a study of four major jurisdictions

An Indian court recently ruled that God's name was registrable as a trademark. We spoke to experts across four key jurisdictions about the different risks brands should be aware of before registering a religious name as a mark. Read more

7 Jan 2020

CNIPA: use of recycled beer bottle with exposed original trademark is illegal

The China National Intellectual Property Administration has indicated that, when the trademark embossed on a bottle cannot be removed, the recycler should cover the trademark with another label in order to render the mark invisible. Read more

6 Jan 2020

Current EU non-agricultural protections not equipped for many products, argues new academic paper

The existing AO system of protection is too restrictive to effectively act as a sui generis GI regime for many non-agricultural products, contends new research - which calls for the scaling up of a EU-wide Protected Geographical Indications scheme. Read more

6 Jan 2020

Introduction of central opposition procedure for ARIPO marks

A new rule has recently been introduced into the Banjul Protocol on Marks to provide for a procedure for lodging notices of opposition directly with the African Regional Intellectual Property Organisation. Read more

2 Jan 2020

Changing of the guard at the USPTO

As Mary Boney Denison retires from her tenure as USPTO commissioner for trademarks, she reflects on her final year at the office, which involved tackling improper filing behaviours, the introduction of mandatory e-filing and significant IT changes. Read more

2 Jan 2020

Top filers at the USPTO revealed

Whether concerned about bad-faith filing at the USPTO or seeking to benefit from US marks, the level of demand from Chinese entities has been a remarkable phenomenon over the past few years – as the filing data reveals. Read more

2 Jan 2020

#FairUse? Third-party trademarks in social media hashtags

European and US case law suggests that there are very few situations in which use of a third party’s trademark in a hashtag is permissible. As a result, those looking to advertise on social media need to be aware of the strict rules that apply. Read more

2 Jan 2020

Taking a stand against the stans: counterfeiting trends in Central Asia

Central Asia is facing a series of unique counterfeiting problems, but a detailed look into the legal measures adopted in the region suggests that Kazakhstan may have the answers. Read more

2 Jan 2020

Better together: licensing best practice for the Indian market

India is one of the fastest growing economies in the world and has seen a spurt in inbound as well as outbound investments involving trademark licensing agreements. However, there are crucial legal considerations to balance with commercial plans. Read more

2 Jan 2020

Trademarks off-world: a new frontier or lost in space?

With space exploration travelling further than ever before and celestial vacations on the horizon, a rudimentary trademarks framework for Earth’s orbit, the moon and Mars is no longer light years away. Read more

24 Dec 2019

How to prove use without invoices – lessons from BIG MAC decision

Any evidence of genuine use is likely to include invoices for products bearing the relevant mark, but what if there are no invoices? The recent BIG MAC case provides useful guidance on which alternative types of evidence are viewed most favourably by the courts and IP offices, and how best to present these. Read more

20 Dec 2019

Chinese courts could begin to buckle under the strain of growing IP litigation

Growth figures for China’s IP litigation are enough to give anyone a case of vertigo, with cases increasing at a faster rate than anywhere else on Earth. WTR talks to experts on how the Chinese courts are coping with that litigation demand. Read more

20 Dec 2019

What 2019 filing numbers tells us about the US trademark landscape

Our exclusive deep dive into the latest USPTO filing data reveals some telling tendencies about Nice classes and Madrid versus national and state applications. Read more

20 Dec 2019

What 2019 filing numbers tells us about the US trademark landscape

Our exclusive deep dive into the latest USPTO filing data reveals some telling tendencies about Nice classes and Madrid versus national and state applications. Read more

19 Dec 2019

A year in review: trademark experts in Asia-Pacific reveal their expectations for 2020

With the Summer Olympics taking place in Tokyo and the protection for geographical indications on the horizon in Russia, we head east to determine what experts in Asia and Oceania have learned from 2019 and how brand owners in these jurisdictions can best prepare for the next 12 months. Read more

19 Dec 2019

Board of Appeal reorganisation and changes to trademark-related administrative proceedings: what you need to know  

Following the implementation of the Trademark Directive in Estonia, the Board of Appeal has been reorganised, and substantial changes have been made to the opposition procedure and the board’s scope of jurisdiction. Read more

18 Dec 2019

New Copyright Bill in South Africa, changes to the Lanham Act and merger of Kenyan authorities: 2020 predictions for the Americas, Europe and Africa

Reflecting on an eventful year, WTR asked experts around the world for their top takeaways from 2019 and their expectations for the next 12 months. With recent decisions likely to have a significant effect, we take a closer look at the Americas, Europe and Africa. Read more

18 Dec 2019

IP rights holders take note: Peruvian Customs Office updates customs recordal procedure for IP rights

The Peruvian Customs Office has updated the customs recordal procedure to speed up the process and make it more efficient. The new procedure will be implemented for 2020 renewals, which must be filed within the first 30 working days of the year. Read more

17 Dec 2019

EUIPO figures reveal that trademark infringement is an expensive business in Denmark

The EUIPO’s 2019 Status Report on IPR Infringement reveals that the annual sales lost due to counterfeiting in Denmark amount to €828 million, which represents 4.2% of the total sales in the 11 sectors covered by the report. Read more

16 Dec 2019

Extending the scope of protection of GIs in China

One major challenge facing European GIs in China is conflicts with prior trademarks, sometimes resulting in seemingly insurmountable barriers. However, options are available. Read more

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. Read more

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London, United Kingdom
J A Kemp