Portfolio Management

“The lawful use requirement must go” – academic calls for USPTO to abolish policy

A groundbreaking new paper claims that the USPTO has “no mandate” to cancel or refuse trademark protection through its lawful use requirement, with the author calling for INTA to take up the cause.

“The lawful use requirement must go” – academic calls for USPTO to abolish policy
How a hands-on approach helps FSC IP counsel push sustainable brand message
14 Jun 2021

How a hands-on approach helps FSC IP counsel push sustainable brand message

In an exclusive interview, Ugreson Maistry, trademark and IP counsel at the Forest Stewardship Council, reveals why teaming up with industry players not only benefits the environment, but also helps raise the profile of sustainability groups.

Corsearch acquires Incopro; mascots and cancel culture; Corona crowned top beer brand; and much more
13 Jun 2021

Corsearch acquires Incopro; mascots and cancel culture; Corona crowned top beer brand; 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.

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16 Jun 2021

General Court annuls EUIPO decision in HISPANO SUIZA case

The General Court found that the EUIPO was wrong to rule out, as a matter of principle, the relevance of the ‘market practice’ criterion in its examination of the similarity of the goods. Read more

15 Jun 2021

Long-running dispute over STOLICHNAYA and MOSCOVSKAYA vodka marks reignited

Ownership of these vodka brands has been hotly contested since proceedings began in 2004. The Full Court of the Australian Federal Court recently allowed an appeal by two Russian state entities, reviving the battle between the parties. Read more

15 Jun 2021

Refusal of application for RING upheld on appeal

The Icelandic Board of Appeal has confirmed the partial refusal of the application for the mark RING on the ground that it was descriptive of certain goods in Class 9, including doorbells. Read more

14 Jun 2021

Court upholds Nivea Men passing-off claim

South Africa’s Supreme Court of Appeal has ruled in favour of Beiersdorf, finding that a shower gel product, Connie Men, passed off the long-established brand Nivea Men. The case is unusual in that one judge issued a robust dissenting judgment. Read more

News

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6 Jun 2021

INFORM Consumers lobbying; US litigation slump; cybersquatting tactics; 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

30 May 2021

Notorious low-cost trademark agencies dominate Google ads; panel report uncovers shift in workplace; WTR 300 reveals leading corporate counsel; 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

23 May 2021

Concerns grow over applicant passport safety; Banksy loses ‘monkey sign’ mark; stretched budgets hit corporate-law firm relationships; 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

18 May 2021

USPTO announces proposed new rules; Clubhouse trademark infringement suit; Atari sues Pixels – news digest

In our latest round-up, we look at Ralph Lauren agreeing to sell the Club Monaco brand, General Mills picking up the Tyson Foods pet food business, the ICANN board signing off on its finances and much more. Read more

Analysis

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11 Jun 2021

The Swiss register is stable and a fan favourite for foreign businesses, particularly those from the US

Switzerland’s economy is highly integrated in the global market, with trademark data revealing how the country is an important consideration for expanding brands. Read more

10 Jun 2021

Character brands, mascots and cancel culture: a step-by-step guide to creating, policing, licensing and retirement

The Long Read: Over the past 18 months a number of brands have retired controversial mascots and characters. BakerHostetler’s Robert (“Red”) BG Horowitz runs through the key considerations brand owners should bear in mind if mascots are to stay current, as well as best practice for how to shelve them while retaining control. Read more

28 May 2021

Target goes all in on private labels and reaps the rewards

The US retailer’s in-house brands are major money makers, which means trademark protection is the number one priority. Read more

25 May 2021

“Joy and tranquility” – former INAPI director reacts to Chile moving closer to Madrid Protocol in exclusive interview

In an exclusive interview with WTR, INAPI’s former director Maximiliano Santa Cruz shares his perspective on Chile taking a step closer to the Madrid Protocol and calls for the registry to incorporate copyright and plant varieties. Read more

Research

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21 May 2021

How China’s political disputes with trade partners impacted trademark filings, both at home and abroad

China is, and has been, embroiled in many disputes on the world stage, which has had knock-on effects on brand owners. Read more

29 Mar 2021

Nestlé scours for attractive brands to keep itself on top of the market

The Swiss multinational has an arsenal of iconic brands and local favourites, which it keeps up to date by adding and dropping businesses in line with evolving consumer tastes. Read more

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. Read more

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

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