15 Dec
2019

Suspicious specimens scourge; Brexit, Boris and brands; counterfeiting hotspots; Uber’s brand strategy; plus 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 9th December

We published analysis of two cases involving Claridge’s and Prada, which serve to clarify the scope – and limits – of extended protection available to luxury brands. Read more here.

Reports indicate that fake goods are costing the Greek economy upwards of €1.3 billion annually, representing around 12% of sales for companies most at risk to IP violations. To aid those seeking to tune their enforcement radars, we asked a local expert how brand owners can effectively tackle fake goods in Greece and what key physical marketplaces around the country should be focused on. Read more here.

Rights holders in Kenya, Tanzania and Uganda are reaping the benefits of associated trademarks. However, a lack of relevant case law means that legal provisions concerning non-use and assignment of such marks are leaving many scratching their heads. Read more here.

TUESDAY 10th December

In Disney's Frozen 2, main character Anna is seen wearing red-bottomed boots, with some claiming a similarity to the iconic footwear of fashion brand Christian Louboutin. We spoke with IP experts on the issues potentially at play. Read more here.

We presented analysis of the implications of a developing dispute in India, where a court recently issued a blocking order directing Facebook, Google, YouTube and Twitter to take down and remove, on a global basis, particular defamatory videos. Read more here.

Conflict has grown between advertising agencies and clients over a growing trend to withhold payment and IP ownership from rejected pitches. With disputes potentially spanning copyright and brands, we argued that it is a tension for which trademark counsel should be prepared. Read more here.

In our Tuesday news round-up, we looked at a law firm launching a new trademark monitoring tool, some of the brand protection trends to expect in 2020, how Chinese trademark applications are on the rise in Canada, IP protection around baby Yoda, and much more. Read more here.

WEDNESDAY 11th December

A new investigation from WTR finds that the problem of suspicious specimens persists – with legal representatives providing eye-opening accounts of the challenges faced by both IP practitioners and examining attorneys. Read more here.

The Canadian, Mexican and US governments have signed an amended version of the United States-Mexico-Canada Agreement, meaning that ratification is a significant step closer – with the deal highlighting what IP concessions the Trump Administration will expect in future trade deals. Read more here.

WTR recently hosted the fourth annual Brand Strategy China in Shanghai. The event brought together domestic and international brand owners, as well as representatives from associations, online platforms and government agencies. We presented some of the key takeaways from a busy day of discussions. Read more here.

THURSDAY 12th December

Social media marketing departments are increasingly reposting user-generated content on their own sites and social media pages – often with little or no credit to the original creator. We explained why alarm bells should be ringing for trademark counsel. Read more here.

In the latest instalment in our series identifying physical markets in which the sale of fake goods is reportedly rife, we headed to the Eastern European nation of Poland. Read more here.

An ongoing case involving Chanel Inc and retailer WGACA appears to instruct brands that the use of another party’s trademark in combination with their own is impermissible and does not constitute nominative fair use. However, questions remain as to whether a more instructive hashtag would be fair game. Read more here.

Central Asia is facing a series of unique counterfeiting problems, but a detailed look into the legal measures available in Kazakhstan may have the answers. Read more here.

FRIDAY 13th December

The Conservative Party has landed a significant victory in the UK general election, with a majority that essentially confirms that Brexit will occur at the end of January 2020. The result could have significant implications for IP owners. Read more here.

At the end of November, Uber lost its licence to operate in London. The company is appealing and currently able to continue operations, but the incident highlights some of the challenges facing the ride-hailing app industry. Our latest data analysis explored the company’s brand strategy and uncovered its trademark filing patterns. Read more here

Opposition to the Trademark Licensing Protection Act, Fred’s intellectual property being placed on the market, the latest Swiss IP court decision data, the Somalian IP office resuming operations, and much more, featured in our Friday news digest. Read more here.

The General Court of the European Union has ruled against a trademark application due to its implied links to illegal narcotics. We asked industry experts to give their reaction. Read more here.

Plus, we published 10 Legal Update articles examining key trademark decisions and developments from across the globe:

  • CJEU: all courts with jurisdiction to order provisional measures are competent to order such measures with regard to RCDs (European Union). Read more here.
  • Using the new online IP filing system in Indonesia – what you need to know (Indonesia). Read more here.
  • Domain name registration justified by prior business relationship (International). Read more here.
  • Are KITCHEN HEROES K and HERO similar? Lithuanian IP office and EUIPO come to different conclusions (Lithuania). Read more here.
  • DERMOFAES versus DERMOWAS: the role of weakly distinctive elements and the public’s level of attention in assessing likelihood of confusion (European Union). Read more here.
  • Federal Administrative Court confirms that figurative mark containing the word ‘Paris’ is deceptive (Switzerland). Read more here.
  • General Court provides guidance on use of mark in form differing in elements which do not alter its distinctive character (European Union). Read more here.
  • Supreme Court: payments attributed to brand compliance guidance must be added to goods’ value for import duty purposes (Israel). Read more here.
  • UDRP: do not gamble on refiling (International). Read more here.
  • General Court confirms similarity of BILLA and BILLABONG marks (European Union). Read more here.

Trevor Little

Author | Editor

[email protected]

Trevor Little