Enforcement and Litigation

“Europe is not yet prepared” – reaction as Cannabis mark ruled unregistrable by EU court 

The General Court of the European Union has ruled against a trademark due to its implied links to illegal narcotics. Industry experts give their reaction.

“Europe is not yet prepared” – reaction as Cannabis mark ruled unregistrable by EU court 
13 Dec 2019

Nestlé ice cream brand sale, Somalia registry resumes, and IP issues of Greta Thunberg: news digest

In our latest round-up, we look at Swiss IP court data being released, Brand Finance getting certified, Fred putting its intellectual property up for sale, the Austrian IPO launching some new online services, and much more.

12 Dec 2019

Ongoing Chanel case provides limited clarity on use of third-party marks in hashtags

US case law indicates that there are few situations in which use of a third-party mark in a hashtag is permissible. An ongoing dispute between Chanel Inc and local New York retailer WGACA LLC is a reminder that those looking to advertise on social media must tread carefully.

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13 Dec 2019

General Court confirms similarity of BILLA and BILLABONG marks

In a victory for the owner of the BILLABONG mark, the EU General Court has confirmed that there was a likelihood of confusion between the marks BILLA and BILLABONG with regard to certain goods and services. Read more

12 Dec 2019

Going undercover – tips for monitoring the Central Asia counterfeiting market

As the most developed region in Central Asia, Kazakhstan serves as a transit point for counterfeit goods that are produced in China and trafficked to Russia and then Europe. However, there are legal measures that brand owners can take while awaiting improvements to the existing IP legislation. Read more

12 Dec 2019

General Court provides guidance on use of mark in form differing in elements which do not alter its distinctive character

In KA Schmersal Holding GmbH & Co KG v EUIPO, the EU General Court has confirmed that there was a likelihood of confusion between the mark TEC.NICUM and the earlier mark TECNIUM for services in Class 42. Read more

12 Dec 2019

Litigation procedures and strategies: Brazil

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11 Dec 2019

Trademark sales, infringement through food apps and a spotlight on WeChat: Brand Strategy China takeaways

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

10 Dec 2019

Frozen 2 versus Christian Louboutin: could Anna’s red-soled shoes lead to a trademark dispute?

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 speak with IP experts on the issues potentially at play. Read more

10 Dec 2019

Baby Yoda IP protection, wilful counterfeit purchasing, and Fashion Week legal battle intensifies: news digest 

In our latest round-up, we look 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, and much more. Read more

8 Dec 2019

Calls for a Nice rethink; Clarivate Analytics’ acquisition of Darts-ip; law firm mentoring programmes; global counterfeiting hotspots; TMView tips; 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. Read more

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11 Dec 2019

USMCA given green light; significant GI changes now a step closer to reality

The Canadian, Mexican and US governments have signed an amended version of the USMCA, 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

11 Dec 2019

Federal Administrative Court confirms that figurative mark containing the word ‘Paris’ is deceptive

In a blow to German supermarket chain Lidl, the Swiss Federal Administrative Court has confirmed that the figurative mark ESMARA SEE YOU IN PARIS was deceptive. Read more

11 Dec 2019

DERMOFAES v DERMOWAS: the role of weakly distinctive elements and the public’s level of attention in assessing likelihood of confusion

The EU General Court has confirmed that there is no likelihood of confusion between the mark DERMOFAES ATOPIMED in Classes 1, 3 and 5, and the earlier word mark DERMOWAS in Classes 3 and 5. Read more

10 Dec 2019

Geo-blocking or global take-down? Facebook keeps the question alive in Indian dispute

We highlight 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

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4 Oct 2019

As rivals take aim, McDonald’s eyes big tech to drive growth

The fast-food powerhouse has turned to machine learning tech in a bid to personalise the brand experience - however, its rivals have demonstrated that personality is as powerful as technology. Read more

27 Sep 2019

DC Comics’ day one appreciation of characters sets it up for sustained success

Age-old brands prove yet again to be a key asset as streaming wars heat up, but Batman is bigger than the digital era. Read more

30 Aug 2019

Crimson wave – how Harvard outstrips other universities in terms of registered trademarks

Ivy League schools rely on their reputation to attract top-notch talent, so policing these brands is a critical undertaking. Read more

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

Insight

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29 Jul 2019

Practical strategies for managing luxury brands

A group of senior trademark and brand professionals recently convened in New York to discuss strategies for protecting, enforcing and monetising fashion and luxury brands. This special report details some of the key points and presents essential takeaways. Read more

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

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