Enforcement and Litigation

E-commerce law aims to end the tug of war over online liability, but risks remain

With the E-commerce Law soon to take effect in China, brand owners take stock of the significant effect on online enforcement efforts.

E-commerce law aims to end the tug of war over online liability, but risks remain
10 Oct 2018

USMCA “breaks new ground” in geographical indications policy, contends GI consortium

The Consortium for Common Food Names has praised the new USMCA trade deal, claiming it “marks a sea change” in GI policy. In a strongly-worded statement, it also hits out at the EU for “monopolising common names and terms”.

3 Oct 2018

“Very good for brand owners” – IP experts react to USMCA; INTA lauds deal as “major enhancement” over NAFTA

Following the announcement of a new major trade agreement between Canada, Mexico and the United States, we reached out to IP experts to explore their views on the IP aspects of the new deal. 

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17 Oct 2018

Success for Deckers as court rules that "ugg" is not generic for type of boot

In Deckers Outdoor v Australian Leather, the US District Court for the Northern District of Illinois has held on summary judgment that the defendant had failed to prove that "ugg" was generic for a type of sheepskin boot.   Read more

16 Oct 2018

General Court: mere fact that goods are different makes it possible to rule out any likelihood of confusion

In Grendene SA v EUIPO, the General Court has confirmed that there was no likelihood of confusion between the mark HIPANEMA for jewellery and earlier IPANEMA marks for footwear. Read more

12 Oct 2018

No Yin and Yang here: only one may experience TAI CHI for tea

In Tai Chi Green Tea Inc v Diamond Hong, the US Federal Circuit has affirmed a TTAB decision to cancel a registration after the TTAB refused to consider the registrant’s reply brief and the evidence included in the main brief.    Read more

12 Oct 2018

China's Supreme People's Court releases regulations on Internet Courts – key points highlighted

China's Supreme People's Court has promulgated regulations clarifying the jurisdiction of the Beijing, Guangzhou and Hangzhou Internet Courts, as well as various procedural matters pertinent to the adjudication of cases by these courts. Read more

News

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2 Oct 2018

Philippines IP Office to begin mandatory mediation, Donuts adds rights protection feature, and KFC versus KKFC: news round-up

In our latest round-up, we look at the USPTO collaborating with Saudi IP authorities, a reported rise in fake Irish whiskey, the Kenyan government blaming border countries for its fakes problem, and much more. Read more

25 Sep 2018

USPTO director talks trademark clutter, Uber declares itself a verb, and beware sketchy Chinese licences: news round-up

In our latest round-up, we look at Ecuador joining TMClass, ICANN postponing its data privacy webinar, IP Australia undergoing a “technology upgrade”, and much more. Read more

17 Aug 2018

$500 million counterfeit bust, David Beckham leaked logo typo, and another creative cease and desist: news round-up

In our latest round-up, we look at rising trademark applications in Cambodia, how thousands are boycotting brands on Twitter, and much more. Read more

14 Aug 2018

IP Australia wins digital award, Stephen Colbert talks trademarks, and USPTO seeks new judge: news round-up

In our latest round-up, we look at a Minneapolis official who sought registered trademark protection of a blog that criticised her, a Delhi court getting tough on perjury in a trademark case, and much more. Read more

Analysis

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11 Oct 2018

Louis Vuitton Malletier wins opposition against trap singer and rapper Malu Vuitton

The Peruvian Trademark Office has upheld Louis Vuitton Malletier’s opposition against the registration of the mark MALU VUITTON by a Peruvian singer known under the stage name Malu Vuitton. Read more

10 Oct 2018

Court of Appeals recognises evidential value of agreement restricting parties’ rights to trademark

The General Assembly of the Turkish Civil Court of Appeals has held that an agreement restricting the use of a mark can later be relied on to prevent the registration of that mark.  Read more

10 Oct 2018

Honey Badger don’t give a summary judgment

The US Court of Appeals for the Ninth Circuit has reversed the district court’s grant of summary judgment in favour of the defendant greeting card companies in a dispute over the trademark HONEY BADGER DON'T CARE stemming from a 2011 viral video and internet meme titled “The Crazy Nastyass Honey Badger”. Read more

9 Oct 2018

Success for Puma: General Court orders Board of Appeal to re-assess degree of reputation of PUMA marks

In Puma SE v EUIPO, the EU General Court has provided useful guidance on the scope of protection of marks with an exceptionally high reputation. Read more

Research

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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

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