Portfolio Management

Inside the USPTO’s proposal to require the use of US-licensed attorneys in trademark matters

We take a deep-dive into the USPTO's proposal to require foreign-domiciled trademark applicants, registrants and parties to TTAB proceedings to use an attorney who is licensed to practice law in the United States. 

Inside the USPTO’s proposal to require the use of US-licensed attorneys in trademark matters
14 Feb 2019

How Starbucks is protecting its brand in China – exclusive interview

Batur Oktay, who leads Starbucks’ IP committee, explains how the company is working with Chinese authorities to tackle counterfeiting and provides insights into its changing prosecution strategy.

11 Feb 2019

The evolution of Airbnb’s trademark strategy, and what it means for law firm collaborations

Alica Del Valle, lead counsel for IP, marketing, PR and content at Airbnb, expands on the Silicon Valley company’s fast-changing trademark strategy, what it demands from law firm partners and the creation and protection of its Chinese brand, Aibiying.

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18 Feb 2019

Is Sweden aligning itself with EU approach to black-and-white trademarks?

Sweden is one of the few European countries where a black-and-white mark is regarded as covering all colours. However, in a recent case involving two figurative marks, the Patent and Market Court has held that the scope of protection of the earlier mark was limited to its black-and-white representation. Read more

18 Feb 2019

Community design for spray paint gun upheld as invalid by General Court

In Sata GmbH & Co KG v EUIPO, the EU General Court has upheld a decision of the Third Board of Appeal of the EUIPO finding that a design representing a paint spray gun lacked individual character with regard to an earlier design. Read more

15 Feb 2019

New Trademark Law: mark owners must be prepared

Myanmar’s Trademark Law was passed by the Assembly of the Union on 30 January 2019. Importantly for mark owners, marks registered under the current system must be re-applied for once the law enters into force, otherwise they will lose their validity.     Read more

15 Feb 2019

CJEU confirms likelihood of confusion between LUBELSKA and LUBECA

The Court of Justice of the European Union has dismissed an appeal brought by the Republic of Poland in opposition proceedings concerning the figurative sign LUBELSKA and the earlier German word mark LUBECA. Read more

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31 Jan 2019

L’Oreal revealed as top filer of EU trademarks in 2018 as applications to EUIPO rise 5%

In an exclusive guest post, Robert Reading from CompuMark reveals the top corporate filers at the EUIPO in 2018 and looks at some of the key trends from the registry in the past 12 months. Read more

25 Jan 2019

JPO apologises for data leak, Brunei joins TMview, and Absolut accused of trademark bullying: news digest

In our latest round-up, we look at the Japan Patent Office apologising after an accidental data leak, a sauce company suing Wendy’s, counterfeit fans reacting to Alibaba’s latest Taobao claims, and more. Read more

23 Jan 2019

Future-proofing your trademark operations: time to evolve or lose relevance

No role in the IP world is likely to change as much in the next decade as that of the in-house trademark counsel – and law firm and non-legal service provider offerings will need to adapt or face losing ground to competitors. Read more

22 Jan 2019

Louis Vuitton enforcement lessons, ‘.amazon’ deadline set, and Ivanka Trump trademark storm: news digest

In our latest round-up, we look at the multi-trillion dollar toll of counterfeiting, a huge seizure of fakes in the United Kingdom, a Vietnamese restaurant’s 2013 trademark backlash rearing its head, and much more. Read more

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14 Feb 2019

Beijing High Court opens the way for the registration of position marks

In a victory for the French high-end footwear brand, the Beijing High Court has held that Christian Louboutin’s red sole trademark is not a three-dimensional mark, but rather a single-colour trademark designated for use in a specific position. Read more

13 Feb 2019

Hungary amends official fee structure and amounts for trademark-related services

A new fee structure for trademark-related services has entered into force in Hungary. Official fees have decreased for services related to trademarks registered in one class only, but have increased for trademarks registered in two or more classes. Read more

12 Feb 2019

CJEU provides further clarification on genuine use of trademarks

In Pandalis v EUIPO, the Court of Justice of the European Union has upheld a decision of the General Court finding that the trademark CYSTUS had not been put to genuine use for “food supplements not for medical purposes”. Read more

8 Feb 2019

How Mickey Mouse and Darth Vader are helping to grow the Disney brand empire

In this week's data focus, we look at how multi-media giant Disney is stockpiling recognisable brands to build out its business operations and adapt to a changing industry. Read more

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7 Feb 2019

Cost control starts with knowledge: insights into benchmarking fees and costs

When managing the brands of hundreds of companies, it can be frustrating that the actual costs of securing and protecting rights are effectively opaque. In such an environment, benchmarking comes into its own. Read more

1 Feb 2019

Asahi’s acquisition of Fuller’s shows value of brands in overseas expansion

This Japanese company's purchase is only one of a number of deals in the industry, with key players bolstering their premium beer portfolios. Read more

25 Jan 2019

Toy industry shows positive brand growth as companies adapt to reach untapped markets

The toy industry has weathered shifts in the market better than traditional retailers, with brands expanding globally and entering the entertainment space. 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

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8 Jan 2019

Protecting and enforcing design rights: United States

The grant of a design patent entitles the owner to exclusive rights to that design, such that the owner may bring suit against an infringer. In order to assess whether a design patent has been infringed, the scope of protection available to the allegedly infringed design must be properly determined. Read more

8 Jan 2019

Protecting and enforcing design rights: United Kingdom

There is a clear legal distinction between the ‘monopoly right’ in a registered design and the ‘right to prevent copying’ of an unregistered design. Read more

8 Jan 2019

Protecting and enforcing design rights: Turkey

Designs are protected by the new Industrial Property Law (6769), which entered into force on 10 January 2017. According to the new law, both registered and unregistered design protection is available for new and distinctive designs. Read more

8 Jan 2019

Protecting and enforcing design rights: Switzerland

Swiss design is characterised by its hybrid status – it is influenced by the German tradition of functionalism and the Italian radical design of the 1960s. Swiss design lies somewhere between ‘form follows function’ and ‘anything goes’ – it is functional yet rich; linear while unexpected; practical and refreshing. Read more

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Ben Mooneapillay
Partner
Oxford, United Kingdom
J A Kemp