Behind the scenes at WIPO and US Homeland Security; ‘unhealthy’ marks in China; the biggest EU and Canadian cases of the past year; and more

WTR operational management survey

Five minutes to spare? Why not participate in the latest WTR benchmarking survey on operational management, identifying how trademark practice is evolving in both the law firm and corporate environments. Read more

Monday 15 March

Guest analysis from Gowling WLG examined the biggest trademark decisions in Canada last year – including new approaches to grey goods, clarification on infringements involving official marks and a revised standard of review on appeals from the registrar. Read more

With the UK government set to establish eight freeports across England, one major brand association warned that the move could lead to a “serious increase” in illicit trade. Read more

Plus:

• IMPRESSO v ILPASSO: confectionery manufacturer found to have engaged in unfair competition (Belarus)
• Amendments to the Administrative and Contentious-Administrative Procedural Code: key points highlighted (Colombia)

Tuesday 16 March

Tuesday’s news round-up considered how the pandemic is changing consumer habits, EUIPO approval of a blockchain authentication platform, Treasury Wine’s US licensing deal, the upcoming hearing of the SHOP SAFE Act, and much more. Read more

Opening this week’s WTR Connect series of virtual events, WIPO director general Daren Tang provided insight into the agency’s future focuses and issued a rallying call to the IP community, stating: “Trademarks are the bread and butter of the IP world.” Read more

In a special co-published piece, experts at Lewis Roca helped businesses weigh up their options when determining how best to protect unregistered rights in the United States.  Read more

Plus:

• Registration of HILDA device mark limited due to conflict with well-known BARILLA mark (Israel)
• Implementation of mandatory mediation in IP disputes: Court of Cassation issues contradictory decisions (Turkey)

Wednesday 17 March

Coverage of the first two days of WTR Connect virtual sessions included PEPPA PIG fame, the risks and opportunities of an AI-based IP strategy, tips for tackling trademark budget challenges, and much more. Read more

We went behind the scenes at US Homeland Security, with a WTR Connect keynote speech from National Intellectual Property Rights Coordination Center director Steve Francis outlining the department’s IP enforcement efforts. Read more

Following the news that all ‘uspto.gov’ account holders will require identity verification by the end of 2021, legal experts told us that the move is “an important step to cleaning house”. Read more

Now that an auction of over 900 registrations owned by notorious filer Michael Gleissner has been given the green light, WTR compiled an exclusive list of the marks on offer. Read more

Plus:

• Fight fire with fire: Cormeton Fire Protection turns to IPEC in co-branding dispute (United Kingdom)
• Second Circuit: agreement to one is not consent to all (United States)

Thursday 18 March

The WTR Brand Elite indices hit a three-year high after registering a seven-point increase in the month ending 28 February 2021. Estée Lauder and Walt Disney were among the big performers. Read more

We reported on the latest covid-related operational developments at IP offices in Bulgaria, Estonia, Jamaica, Poland and Sri Lanka. Read more

A guest piece by Merchant & Gould’s Christopher Schulte dug deep into Trademarks OnPoint’s global refusal database to try to offer US applicants some kind of predictability on what may be deemed an ‘unhealthy’ mark in China. Read more

This week’s WTR long read examined the key takeaways from the biggest EU cases of the past 12 months and clarified what exactly Brexit means for EU trademark owners. Read more

Plus:

• In the wrong gear: General Court recalls basic principles of likelihood of confusion assessment in VROOM case (European Union)
• Precautionary measures issued based on trade dress of BaByliss hair straightening iron (Peru)
• Primark v Truworths – who will win? (International report: Africa)
• Rightmove successfully proves similarity in ‘.uk’ dispute (International report: Domain name policing and enforcement)

Friday 19 March

ICANN pausing WHOIS reforms, a Tiger King trademark dispute, USPTO AI use, Sakpatenti mediation, and much more were among Friday’s news topics. Read more

WTR analysis of Nice Class data revealed that trademarks within services are trending upwards, indicating a shift in economies away from goods. Read more

Plus:

• Recent IP Court decisions highlight registrability issues for trademarks including numbers (Taiwan)
• RE:PLAY decision: appointed person confirms that appeal is not a replay of opposition (United Kingdom)

Saturday 20 March

In our latest Saturday opinion column, we reflect on recent collaborations between enforcement authorities, IP offices and rights holders. Having shone a spotlight on the dangers of counterfeiting, the pandemic has pushed IP enforcement high up government agendas – and we expect it to stay there. Read more