Analysis: Legal

“The loss of the disparagement bar is something to be truly lamented” – new study looks at USPTO post-Tam

A new research paper has analysed the removal of the disparagement provision at the USPTO following the Supreme Court’s groundbreaking Matal v Tam ruling.

“The loss of the disparagement bar is something to be truly lamented” – new study looks at USPTO post-<em>Tam</em>
“Enormous significance” – Swiss Enforcement weighs in on importance of <em>Iceland v Iceland</em>
19 Oct 2021

“Enormous significance” – Swiss Enforcement weighs in on importance of Iceland v Iceland

In an exclusive interview, Swiss Enforcement managing director David Stärkle reveals why the Iceland dispute at the EUIPO is important for the broader trademark ecosystem.

The Canadian Trademarks Act: more changes are on the way
18 Oct 2021

The Canadian Trademarks Act: more changes are on the way

In an exclusive guest post, Dickinson Wright partner Sanjukta Tole and associate Dan Poliwoda dive into the latest developments of the Canadian Trademarks Act.


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18 Oct 2021

Introduction of utility model patents - advantages and concerns

Recently, the Nigerian Patent Registry unexpectedly directed applicants whose patent applications failed short of the relevant requirements to file the applications as utility models patents. The move has caused concern as it is not backed by any legal provisions or framework. Read more

15 Oct 2021

Amendments to the Law on Industrial Property – key points for IP rights owners

Amendments to the Law No 9947 “On Industrial Property” have entered into force in Albania, introducing several novelties - including the formalisation of the System of Administration of Objects of Industrial Property. Read more

13 Oct 2021

The UAE joins the Madrid Protocol - what it means for UAE and international rights holders

The UAE will become a member of the Madrid Protocol from 28 December 2021. This is a momentous development for UAE-based rights holders, as well as international rights holders looking for trademark protection in the UAE. Read more

12 Oct 2021

Options to expedite trademark examination in Canada

The Canadian Intellectual Property Office has continued its efforts to improve examination processing times and introduced options for trademark owners to expedite examination. Read more

7 Oct 2021

Nigeria’s counterfeiting epidemic: expert outlines what brands can do to fight back

The co-author of a new study into Nigerian counterfeits reveals what international brand owners and IP associations can do to improve the situation. Read more

6 Oct 2021

New rules for filing trademark applications and opposition procedures: key points highlighted

Ministerial Decree No 119/2021, which entered into force on 9 September 2021, amended the Implementing Regulations of the Industrial Property Code. This update reviews the key points of interest for trademark owners and practitioners. Read more

5 Oct 2021

Changes to border measures and IP crimes: what you need to know

A reform of Ecuador’s IP laws came into force on 27 August 2021, providing greater efficiency in prosecuting IP crimes and correcting previous flaws in the border measure system. Read more

30 Sep 2021

Large seizure of fake toys and party decorations in exclusive Lima City district

A large amount of party decorations and toys, including Lego and Paw Patrol, were seized in a raid against a shop located in the upscale district of Santiago de Surco. Read more

29 Sep 2021

China endorses good-faith commitment when applying for well-known status

In continuation of China’s fight against bad-faith applications, applicants and their trademark agents are now required to sign a commitment of good faith when applying for well-known trademark status. Read more

28 Sep 2021

Facebook ruling could open floodgates for state-law claims against internet companies

A Third Circuit decision allowing a US news anchor to sue Facebook for the unauthorised use of her image could lead to a wave of state-law claims against internet companies and online platforms, legal experts warn. Read more

28 Sep 2021

Why your TTAB judgment may fall flat in court

Parties must be aware of the vital differences between TTAB administrative proceedings and federal court civil litigation highlighted by a recent Third Circuit decision. Read more

22 Sep 2021

Patent and Trademark Office updates trademark examination guidelines – what you need to know

In 2019 the Turkish Patent and Trademark Office issued guidelines for the examination of trademark applications in terms of absolute grounds. A new chapter concerning the substantive examination standards for the assessment of confusing similarity has now also been published. Read more

21 Sep 2021

USPTO sanctions another attorney for signing off trademark applications from China without proper checks

The OED has published a new order regarding a US licensed attorney who admitted to performing ‘inadequate’ reviews of trademark filings as part of a business relationship with a foreign firm. Read more

21 Sep 2021

New rules strengthen fight against illegal counterfeit goods

New rules under the Customs Act have entered into force, representing a considerable simplification compared to the old system. This update reviews the three changes that will be of particular significance to IP rights owners. Read more

20 Sep 2021

EURid extends citizenship criteria and gives last chance to UK registrants

The ‘.eu’ registry has updated its registration rules to enable expats from three additional countries to register ‘.eu’ domain names, and announced that Brexit-related withdrawn domain names could still be recovered by the end of this year. Read more

17 Sep 2021

Parallel imports in Venezuela: international trademark owners beware

Although Venezuela has not been seen as a priority by many international companies when it comes to trademark protection, this could change as a result of measures implemented by the Venezuelan government to stimulate imports. Read more

16 Sep 2021

Scammer takedown: USPTO solicitation fraudster fined $4.5m and sentenced to prison

The US Department of Justice has announced a significant win in the fight against trademark solicitation scams, with a Latvian national sentenced to more than four years in prison for defrauding thousands of USPTO trademark registrants. Read more

16 Sep 2021

All eyes on SCOTUS: dispelling confusion on initial interest confusion

A longstanding circuit split could be resolved if the US Supreme Court accepts certiorari in a case that hinges on the initial interest confusion doctrine. Read more

16 Sep 2021

How to weather the coming storm of ex parte cancellations

The Long Read: Winterfeldt IP Group’s Brian Winterfeldt and David Rome prepare for the purge of ex parte cancellations in the United States by offering practical considerations and key strategies for brand owners and practitioners alike. Read more

16 Sep 2021

Partial design applications becoming more popular in South Korea

The steady increase in applications over the past 10 years (particularly by major domestic and foreign companies) suggests that the partial design system has been a useful tool for companies seeking to strengthen their design competitiveness. Read more

15 Sep 2021

Inconsistency, fraud, laundering – research decries challenges for cannabis companies at the USPTO

A new study has investigated the so-called ‘trademark laundering trap’ that cannabis companies face if they seek brand protection at the USPTO. Read more

14 Sep 2021

New measures for e-commerce supervision come into force

The Measures for the Supervision and Administration of Online Transactions have recently come into effect in China, strengthening the pressure against operators of infringing online stores. Read more

9 Sep 2021

Huge raid carried out against clandestine workshop of counterfeit H&S shampoo

The biggest action of the year so far in relation to an IP and public health crime has recently taken place against a clandestine factory in which fake Head & Shoulder goods were produced. Read more

8 Sep 2021

Stricter WHOIS rules come into force in Denmark

While ICANN has relaxed WHOIS information requirements due to perceived issues with the GDPR, Denmark has recently made the consequences of not keeping contact information up-to-date harsher for registrants of ‘.dk’ domain names. Read more

8 Sep 2021

Kazakhstan to introduce mandatory digital labelling of footwear

The mandatory digital labelling of footwear is to be introduced in Kazakhstan on 1 November 2021 in a bid to minimise the presence of counterfeit footwear in the country, which currently makes up 48.5% of the local footwear market. Read more

6 Sep 2021

USPTO report fails to answer central questions on state infringement but highlights enforcement challenge for rights holders

While it failed to answer some of the central questions it was posed, the publication illustrates the uphill battle rights holders face when dealing with infringement by states. Read more

2 Sep 2021

China moves to increase pressure on e-commerce platforms, threatening to revoke business licences for IP violations

China’s SAMR has announced its intention to amend the country’s E-commerce Law, threatening to revoke the licences of platforms that fail to take proper action against counterfeiters. Read more

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