Analysis: Legal

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.

Jones Day at the top of a shuffled pack in new Acritas US Law Firm Brand Index
Call for government action over fake pharmaceuticals as study reveals scale of global problem
24 Mar 2020

Call for government action over fake pharmaceuticals as study reveals scale of global problem

A new study has estimated the total value of counterfeit pharmaceuticals traded worldwide to be up to €4.03 billion, leading to a call for governments to do more to tackle the illicit trade of fake pharmaceuticals.

Trump’s EU trademark revocations provide another lesson on evidence of use
10 Mar 2020

Trump’s EU trademark revocations provide another lesson on evidence of use

Three of US President Donald Trump’s EU trademarks have been partially revoked by the EUIPO. At the centre of the failed defence against the cancellation action is the evidence submitted.


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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

18 Mar 2020

Guideline for handling outstanding appeals against disclaimers imposed by IP Vietnam

The Intellectual Property Office of Vietnam recently issued Notification 3280/TB-SHTT, which provides guidance on filing appeals against disclaimers made by the office, which were submitted before 15 January 2018 and remain unresolved. Read more

17 Mar 2020

Good news for brand owners and practitioners: Trademark Office publishes opposition decisions

In a widely applauded move, the China Trademark Office has announced that it would publish trademark opposition decisions issued as of 1 January 2020. Read more

13 Mar 2020

Trademarks Office now accepting trademark applications – but caution is still advised

Since the overthrow of the Somali government in 1991, it had not been possible to obtain registered trademark protection in the country. It now appears that the Trademarks Office is accepting applications, but there is no publication procedure or opposition period in place. Read more

9 Mar 2020

Why the Italian government’s draft bill on ambush marketing does not go far enough

In January, the Italian government approved a draft bill aimed at regulating ambush marketing. However, in this guest analysis, Cesare Galli, founding partner of IP Law Galli, calls for the Italian Parliament to go further. Read more

9 Mar 2020

Significant changes to Vietnam’s trademark examination practices

Following two meetings held by IP Vietnam and the Vietnam Intellectual Property Association in December 2019, IP Vietnam has clarified several key examination practices and highlighted possible changes to the relevant regulations. Read more

6 Mar 2020

How the SHOP SAFE Act might change the e-commerce counterfeiting liability landscape

A new act introduced in the US House of Representatives this week aims to make e-commerce sites more liable for counterfeit products traded by third parties on their platforms. Read more

5 Mar 2020

New Trademark Law enters into force - key points highlighted

Serbia’s new Trademark Law came into force on 1 February 2020. Some of the changes provided by the law - such as the introduction of opposition proceedings - should be welcomed by trademarks owners. Read more

3 Mar 2020

Franchisors take note: new standards for franchise businesses under trade competition law

A notification issued by the Thai Trade Competition Board with the aim of preventing unfair trade practices in the franchising sector came into force on 4 February 2020. Read more

2 Mar 2020

Could you be more specific? Nice Classification in Canadian trademark examination

The adoption of the Nice Classification in Canada has led to requests for greater specificity in the description of the goods and/or services. Read more

28 Feb 2020

New amendments affecting the pharmaceutical market – key points highlighted

Russia’s Law on the Circulation of Medicines is probably one of the country’s most debated laws. However, new amendments introduced in December have been largely welcomed by the local pharmaceutical community. Read more

27 Feb 2020

Rise of virtual reality and voice shopping – why trademark practitioners must adapt to new technologies

A host of recent studies have identified the increasing use of new technology, including virtual reality and voice search, to interact with brands. The latest data is an essential reminder that brand owners must innovate their trademark practice. Read more

25 Feb 2020

Venezuela to use Nice Classification exclusively

In a significant development for trademark applicants and owners, as of 10 February 2020 trademarks applications in Venezuela must use only the International Classification of Goods and Services established by the Nice Agreement. Read more

21 Feb 2020

The China-US Economic and Trade Agreement and its impact on geographical indications

While most of the provisions of the China-US Economic and Trade Agreement aim to improve the protection of US IP rights, Section F: Geographical Indications (GIs) introduces a means of challenging the GIs that may prevent market access to certain US goods. Read more

21 Feb 2020

Good news for trademark owners as official fees for renewals are reduced

Reduced fees for the renewal of trademarks in Peru, as well as an online channel for renewal applications, will come into force on 22 February 2020. Read more

20 Feb 2020

Newly-amended examination guidelines include detailed standards for reviewing secondary meaning

The Korean Intellectual Property Office’s amended trademark examination guidelines, which came into effect on 1 January 2020, provide specific criteria for determining whether a mark has acquired secondary meaning. Read more

18 Feb 2020

Micro-influencers, Twitch brand challenges, and an IP marathon – INTA 2020 Europe day one observations

This week, the INTA is hosting its annual European Conference in Madrid, Spain. WTR is on the ground and we present key learnings and insights from the first day of the event. Read more

14 Feb 2020

Andean Court of Justice interpretations on cancellation actions: mere respite or permanent solution?

The Andean Court of Justice has issued prejudicial opinions stating that the courts of the Andean Community countries should take a more liberal approach when considering what amounts to use of a mark within the context of a cancellation action. Read more

14 Feb 2020

Plain tobacco packaging obligatory as of 1 January 2020

Following the coming into force of the plain packaging provisions of the Tobacco Act on 1 January 2020, Slovenia has joined the group of countries with the most restrictive rules for tobacco product packaging. Read more

13 Feb 2020

‘.gay’ comes out

The launch of ‘.gay’, initially scheduled for October 2019 but postponed, is kicking off with two sunrise periods for trademark holders commencing this month and running until 6 May 2020. Read more

12 Feb 2020

Ukraine increases criminal penalties for production and distribution of fake drugs

Amendments to Ukraine’s Criminal Code increasing the criminal penalties for the production and distribution of counterfeit medicines entered into force on 28 November 2019. Read more

11 Feb 2020

First Trademark Journals of 2020 released

The Nigerian Trademark Office has released two new Trademark Journals, marking the first journals to be released this year. The increase in such publications should help to deal with a backlog at the registry and put to rest various issues relating to the country’s first-to-file system. Read more

10 Feb 2020

IP prosecution fee change sparks concern among US rights holders

New regulations that will directly affect Venezuelan trademark prosecutions look set to clash with a US executive order as to how US entities can transact with the Venezuelan government. Read more

27 Jan 2020

INDECOPI publishes new draft legislation on IP rights enforcement

The INDECOPI has published a document outlining its proposals to strengthen the enforcement of IP rights in Peru. Although the proposed changes constitute a positive step forward, they fail to address some important issues. Read more

24 Jan 2020

Ukraine amends GI law – what you need to know

Amendments to the Ukrainian Law on Geographical Indications, which bring the national legislation into line with Regulation 1151/2012 on quality schemes for agricultural products and foodstuffs, entered into force on 1 January 2020. Read more

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