Analysis: Legal

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
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.

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.

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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

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

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

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

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

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

“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

5 Sep 2018

Promoting global IP enforcement reforms should be a “top trade priority” for the United States: new study

Brands fare worse in countries with weaker IP enforcement regimes, and a new study vindicates US government attempts to pressure nations with poor trademark protection and enforcement mechanisms to provide a better environment for brands. Read more

3 Sep 2018

“Negative for business and consumers” – GI association slams Brexit negotiations and possible no-deal scenario

oriGIn has released a strongly-worded statement calling for Brexit negotiators on both sides to preserve GIs as part of the UK’s withdrawal from the European Union. Read more

3 Sep 2018

Plain packaging in India moves closer following Supreme Court decision and upcoming amendments

In the coming days, new governmental amendment rules in India are set to take effect that, according to one expert, suggest that a move towards full plain packaging in the country is only a matter of time. Read more

30 Aug 2018

New leadership, new challenges? Industry insights on EUIPO operations

With the EUIPO looking towards a future under new leadership, we asked practitioners for their take on the office’s current operations and activities, and the challenges that the new management will face. Read more

26 Aug 2018

Harmonisation in practice: a dialogue about foreign trademarks

Industry experts from the United States, the European Union and China outline the key considerations for those looking to expand their portfolios internationally. Read more

24 Aug 2018

A-Z of EU trademark court practice and performance: Netherlands to Slovenia

In the fourth of our five-part series, trademark counsel from law firms across Europe provide an overview of the performance of their countries’ EU trademark courts over the past two years. Read more

24 Aug 2018

A-Z guide of EU trademark court practice and performance: Ireland to Lithuania

In the third of our five-part series, trademark counsel from law firms across Europe provide an overview of the performance of their countries’ EU trademark courts over the last two years. Read more

22 Aug 2018

Brazil on the path to Madrid

After over a decade of debate, Brazil is expected to join the Madrid Protocol next year. But while accession seems inevitable, local practitioners have mixed feelings about the move. Read more

17 Aug 2018

A-Z guide of EU trademark court practice and performance: Spain to UK

In the final part of our series, trademark counsel from law firms across Europe provide an overview of the performance of their countries’ EU trademark courts over the last two years. Read more

17 Aug 2018

A-Z guide of EU trademark court practice and performance: Finland to Hungary

In the second of our five-part series, trademark counsel from law firms across Europe provide an overview of the performance of their countries’ EU trademark courts over the last two years. Read more

9 Aug 2018

“We try to pick our battles carefully”: exclusive interview with AIG’s Shama Elliott

World Trademark Review speaks to Shama Elliott, IP manager at American International Group (AIG), who explains the value non-lawyers can add to trademark departments, sheds light on some of the key challenges facing insurance brands, and more. Read more

3 Aug 2018

“Opportunistic filing after a disaster remains an issue” – MH370 rights shine spotlight on tragedy marks

Trademark departments have a key role to play in the wake of tragic events, with one expert telling us that defensive filings should be “a primary prevention tool” against opportunists Read more

1 Aug 2018

Chaos as PTO imposes overly strict power of attorney requirements

New power of attorney requirements imposed by the Patent and Trademark Office (PTO) have caused administrative chaos in Bolivia. Following intervention by the Ministry of Economic Development, the PTO is now having to backtrack. Read more

1 Aug 2018

Anti-sanction bill keeps intellectual property in safe harbour

A new anti-sanction bill aimed at the prevention and suppression of unlawful and hostile foreign actions is now in force in Russia. Importantly, the bill generally does not concern the IP assets of foreign legal entities. Read more

1 Aug 2018

Cloudy skies forecast for trademark licensees in the wake of Tempnology

In light of the recent Tempnology decision, parties and their trademark counsel must exercise more caution than ever when drafting trademark licence agreements. Read more

31 Jul 2018

Amendments to Industrial Property Law due to come into force - key features explained

Earlier this year, the Mexican Senate approved a decree which introduced significant amendments to the Industrial Property Law. This update highlights the key changes introduced by the decree, which is due to come into force on 10 August 2018.  Read more

31 Jul 2018

“Stop the uncritical worship of the God of Automation”: practitioners push back on end-to-end electronic filings

Practitioners have raised concerns about the USPTO's proposed move to implement end-to-end electronic filings, with current systems criticised and warnings that it could create an opportunity for trademark scammers. Read more

30 Jul 2018

Cancellation of marks: Ministry of Economy's practices in implementing Trademarks Law create challenges

The Ministry of Economy’s interpretation of the provisions of the UAE Trademarks Law relating to the cancellation of trademarks has created challenges for mark owners and cancellation applicants. Read more

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Find an expert

Ann-Cathrin Hoel
Director, Legal Department
Oslo, Norway
Onsagers AS