22 Sep
2019

New safety warning over USPTO rules; Charming Charlie resurrection plans; takeaways from MARQUES; breaking down gender barriers in the IP world; plus much more.

Everything we covered on WTR over the last 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 16th September

As INTA’s annual Trademark Administrators and Practitioners meeting got underway in Berlin, WTR sat down with the conference co-chairs to explore how the legal community can better support, and benefit from, its paralegal colleagues. Read more here,

Brazil’s accession to the Madrid Protocol is a landmark development for the international trademark system. Tove Graulund of Graulund Consulting provides her take on the move and the lessons that can be learned from it. Read more here.

In June a group of senior IP professionals gathered to discuss how best to continue the task of increasing the number of women across the full spectrum of IP-related careers. The result was The Boston Manifesto, which provides a range of concrete and positive proposals to carry forward. Read more here,

TUESDAY 17th September

For the next edition of our series on physical marketplaces around the world that reportedly engage in the trade of counterfeit goods, we head back to Latin America to focus on Chile. Read more here.

In our first news digest of the week, we look at the rising demand for Chinese trademarks, a swoop on fake Oakland Raiders merchandise, efforts to tackle counterfeit vaping products, the Swiss Parliament’s move to endorse new anti-piracy legislation, and much more. Read more here.

WEDNESDAY 18th September

A new report has revealed that almost two-thirds of consumers expect brands to do more to protect them from exposure to counterfeit goods when shopping online. In our latest opinion column, we argue that the findings highlight how important it is that companies do not shy away from talking about counterfeits. Read more here.

INTA’s annual Trademark Administrators and Practitioners meeting was held in Europe for the first time this week. WTR was on hand for the event, which presented a number of key takeaways on trademark management and team development. Read more here.

Litigation success in Brazil is ultimately rooted in an understanding of the law and the strategic approaches adopted. In the first of a two-part article, João Vieira da Cunha and Jaddy MAP Messias of Gusmão & Labrunie answer five key questions about the pre-litigation phase. Read more here.

In the second part of our focus on enforcement in Brazil series, 12 key questions on litigation processes and strategies are answered. Read more here.

THURSDAY 19th September

Last week CJS Holdings won an auction for the Charming Charlie IP portfolio, prevailing with a $1.125 million bid. As we argued, the sale and plans to resurrect the retail brand offer a number of strategic takeaways for trademark professionals. Read more here.

A major seminar, Foresight 2020: State of the Union in the Domain Name Industry, was hosted at INTA’s headquarters in New York last week. In an exclusive guest post, we asked one of the organisers to present some of the brand protection takeaways from the event. Read more here.

FRIDAY 20th September

A new petition to the USPTO requests that recently amended rules regarding the need to include physical addresses on applications be reconsidered. Talking exclusively to WTR, the attorney who filed the petition claims it is “a time-sensitive matter” due to serious ongoing risks. Read more here.

At this week’s TMAP, WTR sat down with Priscilla Gomes, a paralegal in the Windows and games department of Microsoft, to find out whether fears of AI are warranted or misguided. Read more here.

Hundreds of trademark practitioners descended on Ireland this week to attend the 2019 MARQUES Annual Conference. We provided key learnings from the event, including warnings over Brexit-related fraud, the dangers of giving clients too much advice and the uncertainty facing GIs. Read more here.

In our latest news digest, we look at the backlash centred on a SAGA-branded customer brochure, the latest on Air New Zealand’s controversial Kia Ora application, a Chinese IP firm reportedly mulling a sale, and much more. Read more here.

SATURDAY 21st September

In our latest data jurisdictional data analysis we turned our attention to New Zealand, exploring the domestic brand landscape and revealing the top corporate and law firm filers. Read more here.

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

  • Delhi High Court: VISTARA deserves to be recognised as well-known mark (India). Read more here.
  • MONOPOLY case: a new light on bad faith? (EU). Read more here.
  • Strategies and pitfalls with fees under Canada’s new trademark regime (Canada). Read more here.
  • Peruvian authorities crack down on counterfeiters: huge raid conducted in Lima shopping centre (Peru). Read more here.
  • Roughing the applicant: USPTO refuses Tom Brady’s TOM TERRIFIC trademark applications (US). Read more here.
  • New Balance foiled in its attempt to invalidate 百伦 marks (China). Read more here.
  • Delhi High Court: use of word that is prominent in registered logo mark amounts to infringement (India). Read more here.
  • CJEU clarifies jurisdiction in online infringement cases: the consumers' country is the place of infringement €). Read more here.
  • PREZOIL case: the scope of protection of a mark versus the discretion of the Intellectual Property Office (Ecuador). Read more here.
  • Sky’s opposition maintained against Skyworth Group Company Limited’s application to register SKYWORTH (Ireland). Read more here.

Trevor Little

Author | Editor

[email protected]

Trevor Little