Analysis: Legal

USPTO warns of fraudulent solicitations as attorneys voice concern over Liberty Legal Firm marketing campaign

The USPTO today warned users about “new kinds of solicitations” involving communications via email and text message, with one recent example involving texts falsely claiming to be a ‘USPTO Trademark Alert’.

USPTO warns of fraudulent solicitations as attorneys voice concern over Liberty Legal Firm marketing campaign
While China remains in the IP policy crosshairs, on the ground momentum is positive
20 May 2020

While China remains in the IP policy crosshairs, on the ground momentum is positive

In our latest opinion piece we observe that, while the US-China war of words over IP protection continues to grab headlines, the Asian country is going about its business.

Deepfakes, AI, IP enforcement and Jay-Z: the legal dilemma that regulators are facing
13 May 2020

Deepfakes, AI, IP enforcement and Jay-Z: the legal dilemma that regulators are facing

In this exclusive guest piece, Kimiya Shams, legal counsel at technology company DEVIALET, reflects on the current challenges for those enforcing against deepfakes.


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28 May 2020

Recordal of licence and franchise agreements in Cambodia: what you need to know

Cambodia’s Ministry of Commerce has recently issued a ministerial decree which regulates the recordal of licence and franchise agreements in the country. Read more

21 May 2020

EAEU members sign trademark agreement

The Agreement on the Eurasian Economic Union (EAEU) Trademarks, Service Marks and Appellations of Origin has been signed by all EAEU members states. This represents a significant step in establishing a unified IP system in the EAEU. Read more

20 May 2020

Recent changes to trademark prosecution in Indonesia – what you need to know

Trademark owners and practitioners should be aware of certain changes to trademark prosecution that have recently taken place in Indonesia. Read more

13 May 2020

Dubai International Financial Centre introduces encouraging new IP law

The new Dubai International Financial Centre IP Law introduces a number of common law and best practice concepts to the wider UAE IP landscape. Read more

7 May 2020

Confusing CBD: post-legalisation trademark strategies for food and beverage marks

In this guest piece, Andrea Anderson and Lee Gray offer insight into how the USPTO may approach examination of CBD marks once legal prohibitions are lifted. Read more

5 May 2020

Trademarks take centre stage in historic US Supreme Court hearing

The US Supreme Court this week made history on two counts: by conducting its first teleconference hearing and by providing a live audio feed of the session, taking the public inside the proceedings process. Read more

5 May 2020

Federal Circuit confirms that colour marks of certain “character” can be inherently distinctive for product packaging

In In re Forney Industries Inc, the US Court of Appeals for the Federal Circuit has vacated and remanded the Trademark Trial and Appeal Board’s refusal to register a trademark consisting of a gradient of multiple colours applied to product packaging. Read more

30 Apr 2020

“It is good to get away from the haters”: Trademarkia founder looks to future outside trademark law

In an interview with WTR Trademarkia founder Raj Abhyanker has revealed that he is stepping back from the trademark world to develop civil engagement technology solutions. Read more

27 Apr 2020

Prison sentence likely to be issued against repeat offender who filed false licensing agreement

The IP Public Prosecutor has filed a criminal claim in a case involving fake goods bearing well-known marks for apparel. It is likely that the court will issue an exemplary ruling in order to strengthen the protection of IP rights in Peru. Read more

23 Apr 2020

UAE Trademark Office reduces official fees

In a welcome development for trademark owners, the UAE Trademark Office has reduced the majority of its official fees by up to 30%, including for searching, filing, registration, renewal and oppositions. Read more

22 Apr 2020

Talcahuano Customs makes historic seizure of counterfeit pills

Within the context of strict controls on health products due to the current covid-19 pandemic, on 12 March 2020 customs agents in Chile seized a significant amount of counterfeit fat-burning pills. Read more

20 Apr 2020

Kazakhstan limits administrative actions that IP owners can take against small businesses

Decree 229 has restricted the administrative actions that IP owners can take against small businesses suspected of IP rights infringement. This is having a negative impact on trademark owners, as raids were the main method of securing evidence against counterfeiters. Read more

9 Apr 2020

Counterfeit detergent packaging seizure in Peru: the fight against fakes during the covid-19 pandemic

A recent raid carried out by the Peruvian National Police highlights that counterfeiters have noticed the increased demand for essential goods since the start of the covid-19 pandemic - and want to take advantage of it. Read more

8 Apr 2020

10 counterfeit hotspots in China that brand owners should be aware of

In the latest instalment in our regular series on marketplaces around the globe that are reportedly notorious for being counterfeit havens, we head to arguably the world’s main focal point for fake goods: China. Read more

7 Apr 2020

“The most significant precedent”: New Balance scores China Supreme Court victory against copycats

China’s Supreme People’s Court has invalidated two trademarks imitating the signature N mark owned by New Balance. The company’s Shanghai-based IP counsel describes the decision as “a powerful weapon” for all brand owners. Read more

7 Apr 2020

Expedited examination of trademark filings now easier to request

The Korean Intellectual Property Office is now allowing requests for expedited examination as long as the applicant pays for a prior trademark search. It is expected that requests for expedited examination will rise as a result. Read more

6 Apr 2020

OEM for export: balancing trademark rights and Chinese economics

Despite courts vacillating between opposing positions on whether affixing a trademark to OEM goods for export constitutes use or non-use of a trademark, the Supreme People’s Court now appears to have settled on an answer. Read more

6 Apr 2020

Cannabis legislation opens the door for pharmaceutical brands in Latin America

With new legislation regulating the use of cannabis-based medicines in Argentina and Brazil, the emerging market is an open playing field for pharmaceutical brands looking to make their mark in Latin America. Read more

6 Apr 2020

Where Sharia meets intellectual property: brand protection in GCC states

For brand owners that need to protect and enforce their intellectual property in the Persian Gulf, understanding the impact of Sharia law can help to ensure their actions are more effective. Read more

6 Apr 2020

Navigating geographical indications in the European Union

While European IP practice has begun to actively recognise and protect geographical indications, they are still treated with trepidation in the IP world. Read more

6 Apr 2020

Case-handling insights – from initial strategising to trial management

Whether before lay jurors or a single judge, the art and science of trial advocacy remains largely the same – as this hypothetical case journey illustrates. Read more

2 Apr 2020

Venezuela establishes new procedure for protecting local GIs

The Venezuelan Intellectual Property Office has established a new procedure for protecting local geographical indications based on the Paris Convention, which it published in a bulletin in February 2020. Read more

1 Apr 2020

Mexico joins Hague design registration system

Mexico has deposited its instrument of accession to the Geneva Act of the Hague Agreement, bringing the number of members to the Hague design registration system up to 74. This is likely to have a significant impact on the number of Hague designs being applied for. Read more

30 Mar 2020

Amendments to the Industrial Property Act come into force – what you need to know

Amendments to the Industrial Property Act, which were adopted by the Slovenian Parliament on 4 March 2020, came into force on 29 March 2020. This update summarises the key changes for applicants and trademark owners. Read more

30 Mar 2020

EUIPO guidelines: more guidance now available

The EUIPO’s new trademark and design guidelines entered into force as of 1 February 2020. While there are no fundamental changes to the 2017 version of the trademark guidelines, the new guidelines shed light on various aspects of interest for practitioners. Read more

26 Mar 2020

Seizure of counterfeit rolling bearings highlights importance of buying goods from authorised sales points

In 2018 the National Customs Office seized an in-transit container of counterfeit rolling bearings in Uruguay. This case, which is still ongoing, is significant due to the type of product involved. Read more

25 Mar 2020

Jones Day at the top of a shuffled pack in new Acritas US Law Firm Brand Index

Jones Day has maintained its position for the fourth year in a row. Below the number one spot, however, the 2020 Acritas US Law Firm Brand Index reveals a changing landscape. Read more

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