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Enforcement and Litigation

Concerns raised over India IPAB abolition; Trademark Express dispute finally ends; Florida State unveils new student-athlete NIL programme; and 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.

Concerns raised over India IPAB abolition; Trademark Express dispute finally ends; Florida State unveils new student-athlete NIL programme; and much more
What is notable about the Colin the Caterpillar spat is not the dispute itself
17 Apr 2021

What is notable about the Colin the Caterpillar spat is not the dispute itself

In our latest Saturday opinion column, we consider the media frenzy surrounding the news that Colin the Caterpillar and his nemesis Cuthbert are locked in a legal dispute.

Colin Caterpillar trademark spat; infamous wine counterfeiter deported; Dole brand expansion – news digest
16 Apr 2021

Colin Caterpillar trademark spat; infamous wine counterfeiter deported; Dole brand expansion – news digest

In our latest round-up, we look at Brainbase expanding its customer base, a new report that finds consumers trust tightly spaced logos, the Brazilian trademark office opening a public consultation, and much more.

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16 Apr 2021

The KOTEX case or the importance of expressly stating the grounds on which an opposition is based

In a victory for Kimberly Clark Worldwide Inc, Peru’s Administrative Court of Appeals has declared - pursuant to a Supreme Court of Justice order - the nullity of two resolutions issued over 14 years ago in a dispute involving two KOTEX marks. Read more

15 Apr 2021

Success for Andreas Stihl as General Court finds that colour combination mark is valid

This decision of the General Court highlights that it is crucial to include precise descriptions in applications for the registration of trademarks consisting of a combination of colours. Read more

15 Apr 2021

Federal Circuit: you can’t camouflage express trademark contract terms

This dispute between the US Army and a brand management company that sold clothing bearing the Army logo addresses a range of trademark licensing issues. Read more

14 Apr 2021

“This will be an impediment to India’s image”: concerns over costs and backlogs voiced after IPAB is abolished

Last week the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance 2021 was promulgated, effectively abolishing India’s IP Appellate Board and transferring its functions to the country’s commercial and high courts. Read more

News

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13 Apr 2021

Activision strikes back with Warzone lawsuit; France.com fight continues; Leason Ellis brand refresh – news digest

In our latest round-up, we look at the IP Office of New Zealand launching a new hearings initiative, Canopy Growth acquiring a leading marijuana brand, and much more. Read more

12 Apr 2021

We have a problem – influencers endorsing counterfeits (op-ed)

Kimiya Shams, legal counsel at technology company DEVIALET, reflects on the concerning trend of influencers endorsing counterfeit products. Read more

11 Apr 2021

INFORM Consumers Act row; strategic takeaways from Brand Strategy India; new WTR Special Report; and 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

9 Apr 2021

FIFA licensing boon; former USPTO director rejoins law firm; INAPI hosts first gender roundtable – news digest

In our latest round-up, we look at GoDaddy increasing its TLD portfolio, Timberland’s trade dress getting the boot, the Peruvian IP office warning political parties to respect IP, and much more. Read more

Analysis

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13 Apr 2021

Fight or flight? Study finds litigation can be an effective deterrent to future counterfeiting activity

A new study has looked at whether trademark litigation is an effective strategy against counterfeiters, with one of the authors telling WTR that “the legal costs of today’s litigation should be weighed against future infringement”. Read more

10 Apr 2021

Satan Shoes settlement is a good result for both parties, but some will lament the fact the case was not heard

In our latest Saturday opinion column, we examine how the dispute between Nike and MSCHF’s Satan Shoes played out. Read more

8 Apr 2021

Seven strategic takeaways from Brand Strategy India 2021

Over the past two days, WTR has hosted a number of ‘Brand Strategy India’ sessions at the IPBC India virtual event. These discussions  have offered a range of critical takeaways for rights holders. Read more

7 Apr 2021

Slight rebound expected for 2021 US trademark litigation levels but future remains unclear

Trademark litigation filings at US federal district court level are predicted to exceed 2020’s number this year. However, the uptick is expected to be modest. Read more

Research

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18 Dec 2020

China trademark litigation: all the statistics you need to know

In a new annual article, we delve into infringement data to track trends and identify key figures Read more

16 Sep 2020

As US trademark application levels bounce back stronger, litigation filings continue to plummet

Andrei Iancu, director of the USPTO, has identified a V-shaped recovery in trademark applications after a drop earlier this year. However, litigation filings are continuing their downward spiral. Read more

21 Feb 2020

Football: a game where every brand wins

Football teams and corporates are cashing in on brand value, but a changing industry means clubs need to use new methods to continue strengthening their presence and engagement levels. Read more

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

Insight

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12 Dec 2020

Why Mexico needs clearer publicity rights

With image rights protected mainly by the Federal Copyright Law, the overlap between an individual’s right to control use of their image and the automatic copyright established on behalf of an author can lead to courtroom conflicts. Read more

12 Dec 2020

EU image rights: when the product is us

In the absence of a harmonised EU law on image rights, individuals are forced to rely on a combination of copyright and human rights claims to protect their most unique asset online – their own image. Read more

12 Dec 2020

My name, my face, your trademark? Protecting publicity and image rights in China

A series of high-profile cases has seen publicity and image rights in the spotlight in recent years. Although the laws protecting these rights can be broad, a well-thought-out strategy with evidence of reputation will see celebrities triumph over bad-faith filers. Read more

12 Dec 2020

Social media and the right of publicity: what advertisers need to know

With no US federal right of publicity and the distinction between celebrities and non-celebrities becoming increasingly arbitrary, companies looking to advertise their products through the likenesses of individuals must be up to date with the latest case law in order to get a clear picture of the risks involved. Read more

Trending

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ICANN 70 takeaways; Nike ‘Satan Shoes’ spat; tips for well-known status in China; and much more

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MSCHF teases Nike with trademark lawsuit shirt; VW rebrand backfires; ICANN meeting update – news digest

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Burger King trolls McDonald’s; INTA weighs in with EUIPO amicus brief; Mondelez and Grenade tie-up – news digest

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FIFA licensing boon; former USPTO director rejoins law firm; INAPI hosts first gender roundtable – news digest

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We have a problem – influencers endorsing counterfeits (op-ed)

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Luiz Edgard Montaury Pimenta
Senior Partner
Rio de Janeiro, Brazil
Montaury Pimenta, Machado & Vieira de Mello
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