Portfolio Management

Alibaba's Taobao remains on Notorious Markets list; NovumIP charts toll of pandemic on IP practice; USPTO publishes scathing Chinese filings 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.

Alibaba's Taobao remains on Notorious Markets list; NovumIP charts toll of pandemic on IP practice; USPTO publishes scathing Chinese filings report; and much more
Analysis of the top representatives of Chinese applicants at USPTO reveals strange ebb and flow in workloads
15 Jan 2021

Analysis of the top representatives of Chinese applicants at USPTO reveals strange ebb and flow in workloads

Trademark data shows peculiarities in the mega filers’ activity, particularly within Jonathan Morton’s portfolio.

USPTO highlights role of government subsidies and mandates in growing tide of trademarks from China
14 Jan 2021

USPTO highlights role of government subsidies and mandates in growing tide of trademarks from China

USPTO publishes scathing report into the influx of trademark applications from China, claiming that many “lack value and clutter the trademark register”.

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21 Jan 2021

A not so EASY task after all: easyGroup’s EASY mark found to be devoid of distinctive character

easyGroup’s attempt to strengthen its rights in the EASY family of marks has been thwarted by the UKIPO, which refused to register the mark EASY for various services in Classes 35, 39 and 43. Read more

20 Jan 2021

E-BOKS v EBOX: a trademark setback that e-Boks didn’t sign up for

Following a victory at the Swedish Patent and Market Court, electronic signature provider e-Boks was dealt a blow when the appeal court found that there was no likelihood of confusion between E-BOKS and EBOX. Read more

20 Jan 2021

CNIPA clarifies that confusing colours can make a mark infringing

Additional certainty on whether the colour choices for a mark can make it infringing has been issued following a case involving Tommy Hilfiger’s famous flag. Read more

19 Jan 2021

This mash-up is not a place you’ll go: Seuss copyright will ‘live long and prosper’

In a case involving a Dr Seuss and Star Trek mash-up, the US Court of Appeals for the Ninth Circuit considered claims of both copyright and trademark infringement. Read more

News

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10 Jan 2021

Pfizer rebrand lessons; US litigation slump; UKIPO Brexit operations; 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

6 Jan 2021

Trademark committee created to help USPTO combat fraudulent applications without burdening domestic filers

A new committee has been formed to come up with new procedures to tackle spurious trademark applications at the USPTO following the implementation of the Trademark Modernisation Act of 2020. Read more

4 Jan 2021

The most active filers at the USPTO revealed; Brexit and brands; inside corporate trademark departments: new edition of WTR is now live

The Winter 2021 edition of WTR is now available online to subscribers, offering exclusive insights from USPTO Commissioner for Trademarks David Gooder, reflections on how trademark practice has been impacted by the covid-19 pandemic, wellbeing considerations, and much more. Read more

4 Jan 2021

Connecting the community: brand protection and enforcement takeaways

Across two weeks in October, the WTR Connect online event brought together trademark professionals from more than 67 countries for a series of keynote addresses, virtual fireside chats, open discussion forums, strategic masterclasses and closed-door boardroom discussions. Below we present some of the key takeaways. Read more

Analysis

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8 Jan 2021

Proud Boys™ – far-right group's trademark could face cancellation, legal experts claim

Talking to WTR, the owner of the Proud Boys registered trademark (and former member of the group) reveals how the rights have been used to protect the organisation and stop unauthorised merchandise. Read more

7 Jan 2021

Rebranding opportunity and risk in the spotlight as Pfizer launches new logo

With the eyes of the world on Pfizer, WTR spoke to experts on what the pros and cons might be for undergoing a rebrand at such a pivotal moment. Read more

16 Dec 2020

Exclusive JPO perspective on falling filing numbers for non-traditional marks

Five years after the law was changed to allow the registration of non-traditional marks, application numbers have dropped dramatically. Representatives of the Japan Patent Office offer some insight as to the future of such marks in the country. Read more

9 Dec 2020

Dealing with cut budgets and fighting fakes during a pandemic: interview with Starbucks’ Batur Oktay

WTR sits down with Batur Oktay to explore how he led the Starbucks IP team through the many challenges created by covid-19 this year. Read more

Research

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25 Sep 2020

US and China driving international trademark applications, but question mark looms over the pandemic's impact

This week’s data analysis tells you everything you need to know about international registrations trends over the years, and gives a first look at the 2020 state of play. Read more

11 Sep 2020

Russia exhibits strong filings growth on the back of changes to its intellectual property system

Back-end work continues to improve the registry and trademark landscape. Subsequently, there has been a noticeable uptick in local brands pushing for the protection of their rights. Read more

4 Sep 2020

The TikTok brand has gone global, which is a great feat, but now it faces a reckoning in the US

The video-sharing app is a highly attractive brand for its resonance with the Gen-Z demographic, but its relationship with China and status as a social media giant will create risks for whoever takes it on. Read more

21 Aug 2020

Gymshark: a brand that ticks all the boxes (including trademark strategy)

The UK fitness company has solidified its market presence among the greats with a winning social media strategy, deep commitment to consumers and a forward-thinking approach to trademark protection. Read more

Insight

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23 Sep 2020

Copyright’s revenge on designs: Italian Supreme Court applies CJEU Cofemel ruling

An Italian Supreme Court decision concerning the layout of Kiko make-up stores is a welcome sign of the harmonising effect of the Court of Justice of the European Union’s Cofemel ruling, but could open the door to the protection of 3D designs with little originality or that are mainly functional. Read more

23 Sep 2020

How to determine the best form of protection for a product’s appearance

Trade dress may be the go-to choice for protecting a product’s appearance or configuration, but other IP rights have plenty to offer. Read more

23 Sep 2020

Getting creative: when to protect trade dress under trademark or competition law

In the absence of trade dress-specific legislation, rights holders in China must manoeuvre around the Trademark Law and the Anti-unfair Competition Law if they are to protect their unique designs effectively. Read more

23 Sep 2020

The pros and cons of industrial designs, trademarks and trade dress

Having a distinct look is the best way for a product to stand out from the competition, but as Mexico awaits further guidance on new trade dress provisions, how should brand owners choose the right protection for their designs? Read more

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Kuo-Hua Fan
Managing Partner
New Taipei City, Taiwan
Zoomlaw Attorneys-at-Law