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Enforcement and Litigation

How effective teamwork drives 7-Eleven’s trademark strategy

Alison McDade, senior trademark counsel at 7-Eleven, reveals why communication and integration are key to protecting the IP rights of the world’s largest convenience store franchise.

How effective teamwork drives 7-Eleven’s trademark strategy
19 Jun 2019

Three stripes, you’re out! – adidas loses appeal as EU General Court rules trademark invalid

The General Court of the European Union has upheld the decision of the EUIPO to invalidate the trademark registration for adidas’ three-stripe branding. We analyse the decision and look at reaction.

19 Jun 2019

Fraudulent specimens at the USPTO: five takeaways from our investigation – share your experience

Five takeaways from our in-depth investigation into suspicious specimens at the USPTO, and we ask readers to share their experience on the topic and any suggestions to help combat the issue.

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Today

Model case: invalidation of registered trademark due to forged identification documents

The China National Intellectual Property Administration has recently recognised a decision involving the invalidation of a registered trademark based on forged application documents as a model case for 2018. Read more

19 Jun 2019

Strict similarity test for pharma brands applies to nutraceuticals

In Sun Pharma Laboratories Ltd v Ajanta Pharma Ltd, the Delhi High Court has held that the strict similarity test for pharmaceutical brands set forth in Cadila also applies to nutraceutical brands. Read more

19 Jun 2019

The Scotch Whisky Association faces Brexit and GI infringement with a stiff upper lip

Lindesay Low, deputy director – legal at the Scotch Whisky Association, reveals how the company has upheld enforcement efforts amid Brexit chaos and why it remains confident in the face of international infringement, proving itself the worthy winner of WTR’s Not-for-Profit Organisation Team of the Year. Read more

18 Jun 2019

THE PATISSIER case: the registrability of foreign-language marks in Singapore

A Singapore boutique cake shop has successfully defended its registration for the mark THE PATISSIER (the French word ‘pâtissier’ means ‘pastry chef’) for a range of goods and services relating to bakery products. Read more

News

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11 Jun 2019

South African police attacked during counterfeit raid, Chile IP office new director, and Airbnb versus Hairbnb: news digest

In our latest edition, we look at the 2 millionth trademark application at the EUIPO, a new report finding that UK students are "actively disloyal" to brands, a collection of fake video games released, and much more. Read more

7 Jun 2019

First INTA 2020 reception invite, Tom Brady fumbles trademark application, and Toys “R” Us brand returns: news digest

In our latest round-up, we look at highlights from the USPTO’s anti-counterfeiting conference, Alibaba’s plan to use blockchain technology for its IP protection system, and much more. Read more

31 May 2019

KIPO launches all-women anti-counterfeiting group, Make Canada Great Again suit, and cannabis brands: news digest

In our latest news digest, we look at an anti-monopoly committee in Uzbekistan clamping down on a Coca-Cola copy, the BBC drawing ire for perceived slogan nabbing, and much more. Read more

28 May 2019

Battle for the BITCOIN mark, China moves closer to Hague accession, and curry conundrum: news digest

In our latest news digest, we look at the $110 million sale of Sports Illustrated’s intellectual property, the expansion of visual search in TMView, a dispute over a curry-related trademark, and much more. Read more

Analysis

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18 Jun 2019

Malaysia introduces totally revamped Trademarks Bill

The Malaysian Parliament has tabled a new Trademarks Bill 2019 which could bring about significant changes to the existing regime for trademark protection and enforcement in the country. Read more

17 Jun 2019

How the Reckitt Benckiser trademark team took restructuring in its stride

Restructuring can cause a number of headaches for a company, but the WTR Household and Consumer Goods Team of the Year, Reckitt Benckiser, has proven that adaptability and effective communication are the secret to ensuring that enforcement efforts remain uncompromised during times of upheaval. Read more

17 Jun 2019

Kardashians walk - trademark licensee has no standing to sue for infringement

In Kroma Makeup EU LLC v Boldface Licensing + Branding Inc, the US Court of Appeals for the 11th Circuit has held that an exclusive foreign licensee lacked standing to sue for trademark infringement in the United States. Read more

17 Jun 2019

CJEU draws the line in Deichmann: classification as position or figurative mark irrelevant in assessing genuine use

In a case involving a mark representing a cross on the side of a sports shoe, the Court of Justice of the European Union has confirmed that it was irrelevant to determine whether the mark at issue was a position or a figurative mark in order to assess its subject matter. Read more

Research

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11 Jan 2019

Johnson & Johnson data focus: inside the world’s biggest trademark portfolio

In the first of a new series, we shed light on how this pharmaceutical giant's trademark holdings have contributed to its business strategy. Read more

29 Jun 2018

How brands should prepare for the big changes coming to Canada’s trademark market: exclusive data analysis

In our latest report, we delve into Canada’s trademark landscape. We examine how a major overhaul of its trademark laws may lead to a clogged up register, take a look at filing and litigation trends, and much more. Read more

12 Apr 2018

United States slides, Germany continues to rule: counsel rate court systems across the globe

Despite being key litigation battlegrounds, counsel confidence in the court systems of China and the United States remains shaky.  Read more

11 Apr 2018

Customs concerns: counsel identify significant room for improvement in India, Iran and Turkey

Trademark counsel have had their say on the efficiency of customs authorities across the globe – with some of the largest importers of counterfeit goods giving cause for continued concern. Read more

Insight

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14 May 2019

Procedures and strategies for anti-counterfeiting: United States

Grey market goods do not qualify as counterfeit; therefore, distributors and sellers of grey market goods are not subject to criminal penalties. However, rights holders may have other claims against such distributors and sellers based on other intellectual property or contract laws. Read more

14 May 2019

Procedures and strategies for anti-counterfeiting: United Kingdom

While Border Force may seize items suspected of infringing an IP right (including counterfeit, infringing or pirated goods) ex officio, this is quite uncommon (rights holders would still need to submit an ex officio application for action to secure destruction). Border Force will usually seize only such items where a rights holder has a customs application for action in place. Read more

14 May 2019

Procedures and strategies for anti-counterfeiting: United Kingdom

While Border Force may seize items suspected of infringing an IP right (including counterfeit, infringing or pirated goods) ex officio, this is quite uncommon (rights holders would still need to submit an ex officio application for action to secure destruction). Border Force will usually seize only such items where a rights holder has a customs application for action in place. Read more

14 May 2019

Procedures and strategies for anti-counterfeiting: Ukraine

No laws or regulations deal specifically with counterfeiting in Ukraine. Thus, this type of infringement is dealt with under the Trademark Law. Although that statute contains no definition of ‘counterfeit goods’, the relevant civil and criminal laws contain blanket provisions referring to the Trademark Law, particularly the definition of ‘use of a trademark’. Read more

Trending

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Protecting IP in Africa’s free trade environment: a “monumental task” for negotiators

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Gab, Parler, Thinkspot: brands warned of IP risks on new anti-censorship social networks

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General Court: concept of 'bad faith' not confined to limited category of specific circumstances

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Next-generation trademarks: IP Australia on using blockchain to create smart IP rights

5

Ten important academic findings about trademarks from the past 12 months

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Sonia Santos
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Madrid, Spain
Grau & Angulo
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