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Africa & Middle East

Time to end the false dichotomy contained in the Australian Trademarks Act

In this exclusive guest op-ed, a call is made for the removal of "substantially identical" from Section 44 of the Australian Trademarks Act.

Time to end the false dichotomy contained in the Australian Trademarks Act
15 Oct 2018

“A good move for the development of IP on the African continent” – ARIPO, OAPI and WIPO pledge more cooperation

The three organisations have signed an agreement pledging increased technical cooperation, and is a continuation of rising IP collaboration in Africa.

28 Sep 2018

Worldwide spread of plain packaging revealed, TMview expands, and brake pads made of grass: news round-up

In our latest round-up, we look at a study into the accidental purchases of fakes, the Fiji government stepping into a trademark dispute, Kyrgyzpatent warning about use of unregistered marks, two ‘.brands’ calling it quits, and much more.

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24 Oct 2018

Leadership restructuring at the Trademarks, Patents and Designs Registry – key changes highlighted

Nigeria’s Federal Civil Service Commission has created separate offices for the following positions: registrar of trademarks, registrar of patents and designs and director of administration. Read more

18 Oct 2018

Prioritising trademarks in business: the Nigeria Air saga

The failed launch of Nigeria Air by the country’s federal government shows the importance of securing a trademark registration prior to commencing branding and marketing efforts. Read more

28 Sep 2018

How similar is too similar? Lloyd Schuhfabrik Meyer test affirmed

The assistant registrar of trademarks in Kenya has found that Jaguar Land Rover’s F-PACE mark is not similar to Shanghai Durotyre’s earlier PACE mark and affirmed the test laid out in Lloyd Schuhfabrik Meyer. Read more

21 Sep 2018

New design registration regime: what you need to know 

The new Israeli Design Law recently came into effect, and the Ministry of Justice subsequently published draft new Design Regulations. This update reviews the key points concerning the filing, examination and registration process. Read more

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Anti-counterfeiting

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2 Aug 2018

Parallel imports remain a grey area for IP rights in East Africa

Kenya, Tanzania and Uganda each have different legal approaches to the treatment of parallel imports, making generalisations dangerous for trademark owners and importers alike. Read more

27 Jun 2018

Important amendments to IP law proposed: dual trademark registration to be introduced?

Proposed amendments to the Anti-Counterfeiting Act suggest that all marks relating to goods to be imported into Kenya must be recorded with the Anti-counterfeit Authority and trademark registration will be a prerequisite. Read more

7 Jun 2018

New EUIPO report charts increasing sophistication and diversification of counterfeiters

The EUIPO has released a new report, compiling research since 2013, to present a comprehensive and updated picture of the scope and impact of IP rights infringement in the European Union. Read more

24 May 2018

Procedures and strategies for anti-counterfeiting: Egypt

In addition to the IP Law, a number of other laws and regulations govern the protection and enforcement of trademark rights in Egypt. Read more

Brand management

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15 Jun 2018

Despite the potential of the Middle East, excessive fees are leading to a shrinking trademark market: exclusive data analysis

In this week’s data report, we examine the state of the trademark market in the Middle East, taking an in-depth look at filing trends in Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the UAE in particular. Read more

3 Apr 2018

Counterfeits in Casablanca, Kuwait upgrades online filings, and legal blow for Lindsay Lohan: news round-up

In our latest round-up, we look at a warning about counterfeit make-up in China, Casablanca being labelled the “Eldorado of counterfeiting”, and much more. Read more

14 Feb 2018

“This puts a stake in the ground”: why brands must pay attention to the Maasai IP initiative

An initative which represents the Maasai tribe of Kenya and Tanzania in efforts to gain control over commercial uses of its cultural ‘brand’ has recently secured a deal with Koy Clothing. We speak with the negotiator behind the agreement on why it matters for brands. Read more

6 Feb 2018

US Senate confirms Iancu, Zimbabwe targets fakes and brands oppose Conor McGregor: news round-up

In our latest news round-up we look at how the Zimbabwe government is pledging to tackle counterfeit goods, the brands being accused of using “underhand tricks” to fool consumers, and much more. Read more

Enforcement and litigation

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18 Oct 2018

Prioritising trademarks in business: the Nigeria Air saga

The failed launch of Nigeria Air by the country’s federal government shows the importance of securing a trademark registration prior to commencing branding and marketing efforts. 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

27 Jul 2018

Mark owners beware: trademarks slipping through the cracks of loose corporate structures and corporate governance

Two recent decisions of the South African Supreme Court of Appeal highlight the dangers to trademark owners, from a proof of use perspective, in not setting up their corporate structures properly. Read more

18 Jul 2018

Namibia introduces new Industrial Property Act – what you need to know

Namibia’s new Industrial Property Act will come into operation on 1 August 2018. This update highlights the most noteworthy changes concerning trademarks. Read more

Goverment/policy

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24 Jul 2018

“Don’t panic” – new entrants to Madrid Protocol give mixed feedback on their experience since accession

​​​​​​​Law firm practitioners in jurisdictions that have adopted the Madrid Protocol in recent years have shared their experience in an exclusive survey. While some praised the system, other were scathing about its impact. Read more

29 May 2018

South Africa a step closer to plain packaging tobacco products

In a move that brings South Africa a step closer to plain packaging for tobacco products, the Department of Health has invited public comment on the Draft Control of Tobacco Products and Electronic Delivery Systems Bill 2018. Read more

3 May 2018

Trademark rights “at risk” in Yemen following opening of second independent IP office

​​​​​​​Following ongoing unrest in Yemen, international brand owners have been warned of “a very serious and significant change” to trademark rights in the country following the formation of a second IP office. Read more

30 Apr 2018

US government ranks Canada’s border enforcement on same level as China; Special 301 adds Saudi Arabia and UAE

The USTR has published the 2018 Special 301 Report, and Canada has been added to the Priority Watch List due to “a failure to resolve key longstanding deficiencies in protection and enforcement of IP”. Read more

Law firms

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27 Feb 2018

No Brexit talk between IP offices, Scooby Doo infringement and Syria establishes trademark court: news round-up

In the latest round-up, we look the latest IP case data from Saudi Arabia, the establishment of a trademark court in Syria, and warnings over counterfeit security certificates. Read more

2 Feb 2018

Scotch Whisky toasts trademark renewal, fake toy epidemic, and IACC looks back on 2017: news round-up

In our latest news round-up we look at Costco Korea losing a design infringement suit, ICANN extending its GDPR consideration window, the retirement of the Swaziland trademark registrar, and much more. Read more

5 Jan 2018

USPTO urged to address mobile issues, Malawi to establish national office, and bootleg fashion all the rage: news round-up

In today’s edition, we look at the USPTO being urged to improve its mobile capability and the new Trademarks Bill introduced in Malawi.  Read more

15 Dec 2017

Trump's USPTO nominee confirmed, victory for Louboutin, and significant changes at Nigerian IP registry: news round-up

In our latest round-up, we report why Louboutin's red sole mark was declared ‘well known’ in India, upcoming changes at Nigeria’s trademark registry, and much more. Read more

IP offices

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19 Sep 2018

Digital revolution in Africa: ARIPO unveils groundbreaking free IP database

The African Regional Intellectual Property Organisation (ARIPO) has launched a free online database as it bids to centralise IP records from across the continent.  Read more

18 Sep 2018

Most relevant brands in China, OAPI hosts IP celebration, and Trademark Licensing Protection Act in the spotlight: news round-up

In our latest round-up, we look at the IP office of Chile extending deadlines for Japanese applicants, the WHOIS reform group at loggerheads, Indonesia stepping up anti-piracy efforts, and much more. Read more

13 Sep 2018

South African IPO recovers CIPRO domain after cybersecurity concerns

Fears over potential phishing attacks were sparked last month when it was revealed that a domain name previously used by South Africa's Companies and Intellectual Property Commission had been purchased by an individual in Mexico. Read more

18 May 2018

Flurry of royal wedding marks, Israel added to TMview, and India unveils IP mascot: news round-up

In our latest round-up, we look at a number of trademarks that appear to be related to Prince Harry and Meghan Markle, the USPTO unveiling a new resource center, the sale of the Toys-R-Us brand, and much more. Read more

Online

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9 May 2018

New Trademark Bill catches Nigerian stakeholders off guard

In a move that came as a surprise to most stakeholders, Nigeria’s National Assembly Senate Committee on Trade and Investment has held a public hearing for Bill SB 357, which would repeal the current Trademark Act. Read more

21 Feb 2018

Spreading the message – the IP offices taking significant strides to engage with the public about trademarks

In the third part of our series tracking IP office innovation, we take a deep dive into how registries are spreading the trademark message to a wider audience. Read more

20 Feb 2018

Online trailblazers – the IP offices breaking new ground in digital services, and those falling behind

In the second of our four-part series on IP office innovation, we take a look at digital tools and services. We reveal the registries leading the way in areas including website functionality, e-filings and open data access. Read more

19 Feb 2018

'.ng' registrations on the up, but government agency urges cyber patriotism

The National Information Technology Development Agency has called upon government and private sector organisations to use Nigerian data centres, arguing that it would facilitate "reductions in cost and capital flight". Read more

Portfolio management

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2 Jul 2018

Implementation of new standard condition on trademarks: what rights holders should know

The Kuwaiti Trademark Office has started to apply a new condition to all marks consisting of two or more elements. Although the practical impact of this condition is likely to be low, it nevertheless creates some concerns. Read more

25 May 2018

New trademark legislation for Malawi: what you need to know

The Trademarks Act No 2 of 2018, which aims to replace Malawi’s antiquated trademark legislation, was published earlier this year. This update summarises the main points of interest of the new act.  Read more

24 May 2018

No BIG DEAL? Supreme Court confirms likelihood of confusion between marks as used

Israel’s Supreme Court has confirmed that there was a likelihood of confusion between the word mark BIG DEAL and the stylised mark BIG DEAL. When comparing the marks as used side-by-side, the likelihood of confusion was apparent. Read more

16 May 2018

Supreme Court of Appeal: "one cannot monopolise the commons of the English language"

The Supreme Court of Appeal found no likelihood of confusion between PEPPAMATES and PEPPADEW, highlighting the consequences of adopting a descriptive mark through the use of a phonetic equivalent. Read more

Trademark law

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14 Sep 2018

Saudi Arabia to adopt plain packaging, T-ara resolve trademark dispute, and ICANN needs your feedback on RPMs: news round-up

In our latest round-up, we look at the US brands with the most loyal customers, 7-Eleven taking a menswear brand to court for alleged trademark infringement, and much more. 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

4 Sep 2018

Nike in political firestorm, Lego blocks Chinese infringer, and Ghana steps up fight against fakes: news round-up

In our latest round-up, we look at a fashion brand in a dispute with two NFL teams, the New York Times shining the spotlight on illicit vendors in Barcelona, Nike facing a brand boycott due to its new Colin Kaepernick ad campaign, and much more. Read more

2 Aug 2018

High Court Sony decision: are well-known marks really protected?

In a decision that "may be a shock to many", the Kenyan High Court has held that Sony Corporation had failed to prove that its SONY mark was a well-known mark in Kenya. Read more

trending

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“A good move for the development of IP on the African continent” – ARIPO, OAPI and WIPO pledge more cooperation

2

Time to end the false dichotomy contained in the Australian Trademarks Act

3

Trademark procedures and strategies: Israel

4

USPTO urged to address mobile issues, Malawi to establish national office, and bootleg fashion all the rage: news round-up

5

Worldwide spread of plain packaging revealed, TMview expands, and brake pads made of grass: news round-up

latest

1

Leadership restructuring at the Trademarks, Patents and Designs Registry – key changes highlighted

2

Prioritising trademarks in business: the Nigeria Air saga

3

How similar is too similar? Lloyd Schuhfabrik Meyer test affirmed

4

New design registration regime: what you need to know 

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Pravin Anand
Managing Partner
Noida, India
Anand and Anand
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