Enforcement and Litigation

How to effectively measure return on investment in online brand protection – upcoming webinar

On Thursday 2 May, WTR will be hosting a free-to-access webinar focused on measuring the return on investment of online brand protection. Crucially, the exploration will highlight why traditional approaches may not resonate with the C-suite.

How to effectively measure return on investment in online brand protection – upcoming webinar
23 Apr 2019

Turkey trademark uplift, INPI announces Africa IP adviser, and China counterfeit crackdown: news digest

In our latest edition, we look at INTA and the National Trade Foundation for Education partnering up to spread the anti-counterfeiting message, a study highlights how brands need to showcase their authenticity, and much more.

19 Apr 2019

‘.inc’ TLD prepares for general availability with high price point, as details emerge of brand registrations

The ‘.inc’ new gTLD is currently in sunrise with a $2,499 annual retail price, a price point that may deter cybersquatters, but a number of large brands – including Apple, BMW, Google and Marriott – have moved to protect brand-related terms.

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24 Apr 2019

General Court: common figurative elements will make an impression on consumers, despite their weak distinctive character

In Užstato sistemos administratorius VŠĮ v EUIPO, the EU General Court has confirmed that there was a likelihood of confusion between two purely figurative marks for recycling-related services. Read more

24 Apr 2019

Another blow for HBO as opposition against GAME OF VAPES fails

Game of Thrones producer HBO has suffered another defeat before the UK Intellectual Property Office: following on from a decision in which registration of GAME OF STONES was allowed for beer, the office has rejected HBO’s opposition against GAME OF VAPES for tobacco products. Read more

23 Apr 2019

Last one to use is a rotten egg! Court of Appeal issues its decision in Galway Free Range Eggs Limited v O’Brien

A recent case which went all the way to the Irish Court of Appeal illustrates the difficulties faced by new market entrants when trying to come up with a safe name to avoid potential action from existing market leaders. Read more

23 Apr 2019

Court of appeal confirms cross-sectoral protection of BMW’s famous automotive mark in luxury real estate sector

Following a long-running legal battle between German car manufacturer BMW and a Berlin-based real estate company over the latter’s use of the logo HGHI BMW, BMW has been successful on appeal before the Higher Regional Court of Hamburg. Read more

News

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16 Apr 2019

Trump rebrand advice, INTA to offer free trademark legal services, and P&G sells two brands: news digest

In our latest round-up, we look at the USPTO unveiling details of its World IP Day event, the IP Office of the Philippines seeking to amend the country’s IP code, a ranking of most relevant brands, and much more. Read more

10 Apr 2019

Exclusive: new details emerge of proposed Trademarkia and LegalForce sale, as founder eyes exit

Trademarkia founder Raj Abhyanker has written to the shareholders of Trademarkia and LegalForce Inc to confirm his intention to exit from the entities and provide more detail on the prospective sale. Read more

9 Apr 2019

IPONZ fee changes, Estonia new online trademark system, and Game of Thrones at INTA Annual Meeting: news digest

In our latest round-up, we look at Stella McCartney prevailing in a trademark dispute, Lego being named the United Kingdom’s favourite brand, the Mexican Industrial Property Office announcing a new electronic notification service, and much more. Read more

8 Apr 2019

Speculation mounts over USPTO special cannabis unit as practitioners vent anger over examination delays (updated)

A number of US law firm practitioners have contacted WTR in recent days to highlight the apparent existence of, in the words of one attorney, “a ‘specialised’ group of examiners assigned to handle cannabidiol and cannabis-related trademark filings”. Read more

Analysis

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18 Apr 2019

Alma Capital decision reflects nuanced approach to UDRP

In a recent decision under the UDRP, the panel has refused to order the transfer of a domain name consisting of the complainant's registered trademark in its entirety as the leading element of the disputed domain name.  Read more

18 Apr 2019

The right to be heard and the right to be told that one has made a mistake

The decision of the EU General Court in Prim SA v EUIPO is likely to influence how the errors and/or omissions of opposing parties will be handled, knowing that keeping quiet about such issues in EUIPO proceedings may ultimately backfire. Read more

18 Apr 2019

Notre Dame misinformation highlights brand protection challenge for media organisations

There have been numerous reports of fake media accounts spreading conspiracy theories around the Notre Dame Cathedral fire. Such activity around major events is a reminder of the significant challenge that IP practitioners face.  Read more

18 Apr 2019

Federal Circuit clarifies commercial use evidence requirements at USPTO’s request

The court last week made precedential a January 2019 opinion it issued on the type of website specimens required to prove commercial use. The move follows a request by the US Patent and Trademark Office, which argued that it would provide clarity and reduce the chances of future litigation. 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 Mar 2019

Online brand protection strategies for the Russian market

New challenges in a digital world dictate the necessity of adapting brand protection strategies. In the past, it was enough to deal with infringements on a case-by-case basis. However, today it is impossible to handle thousands of online infringements manually and more efficient tools (online brand protection solutions) are required. Read more

14 Mar 2019

Online brand enforcement in Italy: urgent remedies, ISP liability and arbitration

Online trademark infringement disputes in Italy are handled by the specialised judges of the IP courts, which are based in all Italian regions with the exception of Valle d’Aosta. The specialised IP courts are highly efficient, particularly in Milan and Turin, and generally allow trademark owners to obtain sound protection in a matter of a few weeks. Read more

14 Mar 2019

China’s new E-commerce Law

China’s new E-commerce Law (which entered into effect on 1 January 2019) regulates a wide array of matters, including antitrust, data protection, consumer protection, payment and delivery services, among others. However, the law’s provisions on IP protection seem to have attracted the most attention – both positive and negative. Read more

14 Mar 2019

Rights protection mechanisms review: the future of enforcement?

In 2016 ICANN committed to performing a review of all RPMs before launching any further gTLD expansions. This process will likely shape the RPMs for many years to come, so it is important that the community gets it right – in particular, ensuring the viability and utility of these mechanisms for brand owners without compromising legitimate domain name registrations in good faith. Read more

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