Analysis: Legal

“It’s going to make my life much better” – industry experts welcome SCOTUS licensing decision

The Supreme Court of the United States (SCOTUS) has ruled 8-1 in Mission Product Holdings v Tempnology LLC, with one legal expert telling WTR that the ruling helps to create a more stable trademark licensing market.

“It’s going to make my life much better” – industry experts welcome SCOTUS licensing decision
16 May 2019

What you need to know before the controversial Sky v Skykick case hits the CJEU

On Monday, the Court of Justice of the European Union holds a hearing in the closely followed Skykick case. We look at how this case could have a significant impact on trademark practice.

13 May 2019

“Time for our political leaders to get involved” – war of words escalates after UGG decision in favour of Deckers

A jury in the US has found that Australian Leather wilfully infringed a trademark registered to Deckers Outdoor Corporation. The defendant has vowed to appeal, with one member of its legal team calling on the Australian government to intervene.

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15 May 2019

European Union adopts new ‘.eu’ Regulation

The European Union has adopted Regulation 2019/517, known as the ‘.eu’ Regulation, which seeks to future-proof the regulatory framework and to promote the digital single market. Read more

14 May 2019

An update on sound mark protection in Thailand

Although sound mark protection is a relatively new concept in Thailand, it is another option for trademark protection in which IP owners from around the world should take interest. Read more

13 May 2019

USTR's Special 301 Report 2019: focus on Indonesia

According to the latest Special 301 Report of the US Trade Representative, Indonesia - which features on the Priority Watch List - suffers from many problems, including widespread piracy and counterfeiting. Read more

2 May 2019

Gleissner companies owe 37% of all unpaid costs at UKIPO since 2018, research reveals

Research from WTR finds that entities related to serial trademark filer Michael Gleissner owe costs in nearly 30 separate UK legal cases, accounting for 37% of all unpaid costs at the UK Intellectual Property Office since the start of 2018.  Read more

1 May 2019

SIPO’s 2018 annual report shows decline in national applications

The Slovenian Intellectual Property Office has recently published its annual report for 2018, which shows a decline in national patent, trademark and design applications – with the most significant drop being observed in the number of national design applications. Read more

1 May 2019

Your partner in the field: maximising results from US Customs and Border Protection

From recordal to training, there are a number of steps that rights holders can take to enlist the help of US Customs and Border Protection in their anti-counterfeiting endeavours. Read more

1 May 2019

Why active advertising services need active anti-counterfeiting measures

A recent judgment in a dispute between Facebook and Tommy Hilfiger could have a significant impact on the fight against fakes. Read more

1 May 2019

Surprise decision on EU goods in transit provides welcome boost for rights holders

A somewhat surprising – and widely criticised – decision from the Court of Justice of the European Union on the debranding and rebranding of goods in transit has provided trademark owners with a valuable tool for enforcing their IP rights. Read more

1 May 2019

Registration: tips on securing your mark in China

One of the most common issues faced when securing protection in China is the earlier registration of third-party rights, which are then cited against the later application. However, there are various tactics that can be adopted to overcome this hurdle. Read more

1 May 2019

Passing the baton: a new era at BOIP

As a new director general of the Benelux Office for Intellectual Property takes over, a new era at the registry begins. To mark this change, representatives from the office look at what the future is likely to bring. Read more

1 May 2019

How an emergency decree transformed the trademark landscape in Argentina

One year after a significant shift in the Argentine trademark landscape, it is time to reflect on how practitioners have adapted and what international rights holders need to know now. Read more

1 May 2019

Seven strategies for dealing with enforcement at notorious markets in China

Brand victories in the fight against physical market sellers and landlords are all too rare. However, there are a number of practical strategies that can be employed to maximise success in the battle against counterfeits. Read more

1 May 2019

OAPI: change is on the way

The African Intellectual Property Organisation’s recent changes to the Bangui Agreement are due to have a significant effect on trademark rights. Although the revised agreement is not yet in force, IP practitioners should start familiarising themselves with the new system Read more

1 May 2019

Considerations for smart soft IP due diligence from a litigator’s perspective

Many companies have learned the hard way that unidentified IP issues can cause serious trouble, whether immediately or even years after closing a transaction. A strategic approach to IP portfolio due diligence is thus critical to avoid future problems. Read more

30 Apr 2019

New implementing regulations introduce important changes to trademark law and practice

Decree 242/2019, which was passed by the Argentine Executive on 3 April 2019, regulates a large number of provisions of the Trademark Law, as amended in 2018. Importantly, the decree regulates the requirement to file a declaration of use within five years of the date of registration. Read more

26 Apr 2019

New law requires intent to use for trademark applications and makes significant changes to trademark enforcement

The Standing Committee of the 13th National People’s Congress has recently adopted amendments to China’s Trademark Law. One of the main changes is that it will be possible to reject a trademark application on the basis that it has been filed in bad faith and without an intent to use. Read more

25 Apr 2019

Many trademark offices are still trying to grasp service brands: exclusive interview with American Airlines’ Donald Broadfield

Donald Broadfield, chief IP and data counsel at American Airlines, explains how he seeks to overcome the challenges of protecting the company’s service brands, and emphasises the importance of crafting contracts that prevent IP disputes with commercial partners. Read more

24 Apr 2019

“Pioneering at a global level” – China approves amendments to tackle bad-faith filings

China’s legislature has approved amendments to the country’s trademark law, which includes a raft of changes, including empowering administrative authorities to reject malicious applications and impose fines against bad-faith filers and their agents. Read more

24 Apr 2019

IP Australia, EUIPO and UKIPO ranked most effective IP offices

A new survey conducted by WTR has found that IP Australia is the IP office most lauded by trademark practitioners around the world. However, users raised concerns with operations at a number of IP offices. Read more

18 Apr 2019

Federal Circuit clarifies commercial use evidence requirements at USPTO’s request

The court last week made precedential a January 2019 opinion it issued on the type of website specimens required to prove commercial use. The move follows a request by the US Patent and Trademark Office, which argued that it would provide clarity and reduce the chances of future litigation. Read more

17 Apr 2019

Ethiopia introduces online trademark filing system  

The Ethiopian Intellectual Property Office has officially adopted an online trademark filing system. It is expected that the new system will change the culture of doing business and obtaining trademark registrations in the country. Read more

17 Apr 2019

Speediest trademark examination in the world? Italy fast-track system sees publication in just two days

The Italian Trademark and Patent Office recently introduced a fast-track system for the examination of Italian trademark applications, with one expert claiming it could be the quickest trademark examination process in the world.  Read more

16 Apr 2019

US trademark litigation levels predicted to be stable through 2019

Data reveals that 863 trademark litigation actions were filed in the United States in the first quarter of 2019, up significantly year on year. However, that upward trajectory is not expected to continue. Read more

15 Apr 2019

“You need to be willing to stay the course”: brand management insights from Coty Inc’s Joseph Conklin

In an exclusive interview with WTR, Joseph Conklin, senior vice president and global deputy general counsel for beauty company Coty Inc, has revealed how he approaches brand rights enforcement and ensures cross-company collaboration. Read more

12 Apr 2019

Italy implements EU Trademarks Directive and further strengthens trademark protection

Legislative Decree 15/2019, which implements the EU Trademarks Directive (2015/2436), entered into force on 23 March 2019. This update reviews the main novelties that mark owners and practitioners should be aware of. Read more

12 Apr 2019

Serial trademark filer Ikuhiro Ueda speaks out: “I am the best troll”

Yesterday we reported on notorious trademark filer Ikuhiro Ueda, who has personally filed over 100,000 trademark applications. Today, in an exclusive interview with WTR, Ueda claims his filings are part of an ambitious plan to overhaul the global IP system. Read more

11 Apr 2019

The Ueda Files: the world’s most prolific trademark filer and a conundrum for brands

An incredibly prolific trademark filer in Japan, Ikuhiro Ueda, is causing headaches for brands, according to experts. In an exclusive investigation from WTR, we reveal the staggering scope of this portfolio-building exercise. Read more

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Ik-Hyun Seo
Senior Partner
Seoul, South Korea
Cho & Partners