Enforcement and Litigation

Alibaba avoids inclusion on European Commission's new notorious markets list

The European Commission published its Counterfeit and Piracy Watch List, identifying both online and physical marketplaces that are reported to engage in or facilitate counterfeiting and piracy.

Alibaba avoids inclusion on European Commission's new notorious markets list
6 Dec 2018

Democratising trademark surveys – academic calls for step-change in distinctiveness evidence gathering

New study calls for a revolution in trademark survey evidence, with an expert telling us he hopes that brand owners will start embracing lower-cost survey alternatives.

5 Dec 2018

“A significant blow for Cadbury” – UK Court of Appeal decision puts purple trademark at risk

According to experts, the decision at the UK Court of Appeal leaves Cadbury's purple trademark “vulnerable” and could spur competitor Nestlé to consider options in terms of cancelling the registration.

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30 Nov 2018

Finnish IP office launches chatbot, Lazada signs MOU and JPO fakes campaign: news round-up

In our latest round-up, we look at luxury brands avoiding Black Friday discounts, Edible Arrangements filing a trademark lawsuit, a huge counterfeit haul in Paraguay, and much more. Read more

30 Nov 2018

Korea Customs Service's 2017 report on IP rights seizures: significant decrease compared to previous year

According to a report recently published by the Korea Customs Service, there were 7,263 customs seizures of counterfeit goods in 2017 – a 26% decrease compared to 2016. Read more

29 Nov 2018

Barcelona Court of Appeal hands down criminal sentence for commercialisation of counterfeit FC Barcelona products

In a case involving counterfeit FC Barcelona products, the Court of Appeal of Barcelona has confirmed that the defendant had committed a crime against intellectual property under Article 274 of the Criminal Code. Read more

28 Nov 2018

Italian consortium prevents registration of EMILIANA by Chilean wine producer

Iceland’s Patent Office has upheld an opposition filed by Consorzio Tutela Vini Emilia – the Italian association for the protection of the GI ‘Emilia’ for wine – against the registration of EMILIANA by a Chilean wine producer. Read more

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27 Nov 2018

Leicester City scores win against Leeds in trademark dispute, but misfires in bad faith claim

Recent English Premier League champions Leicester City FC has been successful in a trademark opposition against lower league Leeds City FC. Read more

23 Nov 2018

IPOPHL celebrates record haul, Rospatent promotes benefits of GIs, and emoji-tions run high in China: news round-up

In our latest round-up, we look at $7 million worth of counterfeit condoms being seized in China, Canada Goose opening an additional office in Beijing, and much more. Read more

20 Nov 2018

Russian president on fakes, Google trademark win, and tale of the counterfeit-catching brothers: news round-up

In our latest round-up, we look at Pakistan stepping up its fight against fakes, the Finnish IP office reminding users about an impending trademark change, IP Australia seeking user input, and much more. Read more

16 Nov 2018

Cheesy CJEU decision, Black Friday counterfeit risk and Elon Musk in stand-off with Tequila Regulatory Council: news round-up

In our latest round-up, we look at Elon Musk's attempts to secure Tequila-related brand rights, the CJEU's decision that the taste of food cannot be protected by copyright, and the heightened risks of buying counterfeits on Black Friday. Read more

Analysis

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27 Nov 2018

Supreme Court issues landmark decision on parallel imports

In a landmark decision, the Serbian Supreme Court of Cassation has ruled that parallel imports constitute trademark infringement, thus revoking the decisions of the Commercial Court and the Commercial Appellate Court. Read more

26 Nov 2018

Breaking new ground: Court of Appeal rules that ‘first user’ principle is not applicable to disputes between related entities

In Pathmanathan v Portcullis (Singapore) Pte Ltd, the Malaysian Court of Appeal has held that the courts are not bound by “hard and fast legal rules” when deciding on the ownership of a trademark among related entities. Read more

23 Nov 2018

Australian salumi manufacturer defeats Italian food giant in trademark battle over logo

Australian salumi manufacturer Borgo Salumi has defeated an attempt by Italian food giant AIA Agricola Italiana Alimenare to stop it from registering the logo that it had used for decades. Read more

23 Nov 2018

Victory for Louboutin as Delhi High Court clarifies responsibilities of online intermediaries

In Christian Louboutin SAS v Nakul, the Delhi High Court has ruled in favour of Louboutin, stating that the safe harbour protection under Section 79 of the Information Technology Act is not absolute. Read more

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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

17 Mar 2018

Argentina’s emergency trademark law amendments and reassuring filing figures; exclusive data analysis

World Trademark Review examines the IP profile of Argentina, exploring the potential impact of the new emergency decree on trademark law, while providing a thorough breakdown on filings at the Argentine register. Read more

Insight

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12 Sep 2018

Trademark procedures and strategies: Japan

 The Examination Guidelines for Trademarks also play an important role in the examination of trademark applications at the Japan Patent Office (JPO). The most recent revisions to the examination guidelines took place in April 2017, which include clarifying the criteria for judging the similarities between trademarks. Read more

12 Sep 2018

Trademark procedures and strategies: Italy

Italy has a first-to-file system, therefore unregistered trademarks enjoy a lesser degree of protection than registered trademarks. Only in exceptional circumstances can an unregistered trademark prevail over a later registered trademark. Read more

12 Sep 2018

Trademark procedures and strategies: Israel

While the Trademark Ordinance predominantly provides protection for registered trademarks, it also protects unregistered well-known trademarks. Read more

12 Sep 2018

Trademark procedures and strategies: India

The Indian courts have taken the lead in issuing landmark decisions on several issues, including recognition of trans-border reputation and goodwill, trademark violations in respect of unrelated goods, online counterfeiting and protection of celebrity rights. Read more

Find an expert

Paul Lange
Senior Partner
Düsseldorf, Germany
Siebeke, Lange, Wilbert