12 Jul
2020

Private investigators safeguarding brands; diversity and inclusion improving in-house but lagging in Asia; US litigation levels slump; WTR summer issue unveiled; and much more

Everything we covered on WTR over the past seven days – and all you need to know from the world of trademarks to set yourself up for the start of another busy week.

Monday 6 July

A new WTR survey found that 87% of trademark practitioner respondents have used private investigators (PIs) in the past 12 months, with tasks ranging from making test purchases to undertaking raids. However, the relationship between PIs and brand owners is changing. Read more

In an exclusive interview, PayPal in-house counsel Cliff Webb and Olga Stansell discussed how they have managed relationships and built customer trust at one of the world's fastest-moving companies. Read more

Claire Jones, senior trademark attorney at HGF, outlined the importance of companies having honest conversations about costs and conducting infringement risk evaluations amid the covid-19 crisis. Read more

WTR provided an updated look at the measures that some national IP offices have launched this week, as lockdowns begin to ease in certain countries. Read more

Tuesday 7 July

Tuesday’s news round-up considered the latest win for plain packaging in Singapore, Nike’s most visible brand, Zoom feeling the heat, Authentic Brands Group picking up another bankrupt apparel brand, and much more. Read more

In an extract taken from a newly released WTR 84 feature article, Remfry and Sagar’s Shivam Vikram Singh and Jessica Kaur Sahni analysed the first-ever dynamic injunction issued in India and asked what other steps are available to rights holders looking to protect their works in the country. Read more

In a guest analysis, Scott Lesowitz of Lesowitz Gebelin explored how owners of trademarks, service marks, collective marks and certification marks the world over can use the US Anti-cybersquatting Consumer Protection Act to seek cancellation or transfer of infringing domain names. Read more

The latest instalment in our regular series on marketplaces around the globe that are reportedly notorious for being counterfeit havens shone the spotlight on the island nation of Madagascar. Read more

Wednesday 8 July

In-house counsel at Abercrombie & Fitch, the Blue Cross Blue Shield Association, Cancer Research UK, Harley-Davidson, NBA Properties, NBCUniversal and Novartis International AG provided their insight into the diversity landscape of the trademark world, reflecting on their personal experiences and offering further steps to creating a truly inclusive working environment. Read more

We were pleased to announce the release of the summer issue of WTR, which includes a breakdown of the EUIPO top filers, exclusive Chinese litigation data, analysis of the effects of covid-19 on intellectual property, and much more. Read more

Chris Clarke, senior patent attorney at Vectura Ltd and IP Ability committee member, provided WTR with a first look at the results of IP Ability’s inaugural industry survey, revealing the extent of issues faced by those in the IP profession and how firms and companies can adapt and improve. Read more

Five specialised IP courts have opened in Poland this month, with one local expert describing the launch as a significant step towards unifying domestic and EU trademark case law. However, question marks remain over staffing and training. Read more

Thursday 9 July

WTR investigation has found that technology giants Apple and Huawei have secured the highest number of trademark registrations in North Korea in the past two years. Moreover, despite ongoing economic sanctions, many brands see advantage in securing trademark protection in the country via the Madrid System. Read more

As the European Communities Trademark Association celebrates its 40th anniversary, second vice president Carina Gommers reflected on the organisation’s work over the past 12 months, how it has responded to the disruption caused by covid-19, and the launch of its new data and international trade committees. Read more

The EUIPO decision to partially revoke Ferrari’s 250 GTO shape mark for non-use has reiterated the importance of providing robust evidence of use during opposition proceedings. We asked three trademark lawyers how brands should seek to retain control of their iconic marks. Read more

The latest Lex Machina data has discovered that the US litigation filings slump observed in March continued through the second quarter of the year. But while litigation levels are set for a multi-year low, filing levels have largely increased. Read more

Friday 10 July

Our Friday news digest saw Amazon planning to publicly list the names and addresses of third-party sellers, Google launching the ‘Open Usage Commons’ initiative, the UK Intellectual Property Office preparing for Brexit, Rangers football club refreshing its brand, and much more. Read more

WTR data analysis found that despite being the fastest growing brand in the auto industry, Tesla shuns advertising and has a smaller IP portfolio than most leading players. We explained why Elon Musk’s online presence and the diversity of the company’s protections are key to its success. Read more

WTR’s benchmarking survey data revealed that over half of participating Asian law firms do not have a diversity and inclusion (D&I) policy in place, despite 40% of in-house counsel demanding D&I commitments from partners. We considered the possible reasons for this – and why the pace of change needs to increase. Read more

We spoke to the academic behind a recent study into the power of trademarks that proposes a new theory of functionality based on the concept of the ‘fragility’, who stated that there is “no apparent danger for trademarks with psychological dominance” – despite the threat of genericism. Read more

Saturday 11 July

Closing the week as we began, Saturday’s ‘From the WTR archive’ piece reflected on a series of past features focused on the brand protection work of PIs. Read more

Victoria Arnold

Author | Senior Editor, IP Editorial

[email protected]

Victoria Arnold