Europe

“No clarity on continued rights of representation”: trademark experts have their say on the draft Brexit withdrawal text

While uncertainty over the future of the agreed Brexit withdrawal text remains, the 585 page document provides crucial insight into the planned treatment of IP – including rights of representation, exhaustion and the cost-free cloning of rights.

“No clarity on continued rights of representation”: trademark experts have their say on the draft Brexit withdrawal text
13 Nov 2018

Good news on costs but Brexit hearing suggests slow progress on issue of EUIPO representation

In an evidence session focused on UK plans for the treatment of intellectual property post-Brexit, the ‘no cost’ transfer of EU trademark rights to the national register was reconfirmed. However, big questions remain over EUIPO representation and the future GIs regime.

9 Nov 2018

Sweden to modernise trademark rules, new USPTO deputy director, and Benelux fee changes: news round-up

In our latest round-up, we look at a study showing the scale of illicit alcohol, a Counterfeit Mini ad being lauded, luxury brands' increasing use of sound design in their products, and much more.

Latest

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Today

Leading hotel management company prevails in opposition proceedings against CAFE FOUR SEASONS

Four Seasons Hotels (Barbados) Ltd has been successful in opposition proceedings against the Lithuanian figurative trademark CAFE FOUR SEASONS for food and drink services in Class 43. Read more

Today

General Court: black-and-white registration certificate does not satisfy requirements for representation of earlier figurative mark   

In opposition proceedings between Aldi Einkauf and Aldo Supermarkets, the EU General Court has held that submitting a copy of a national registration certificate in black and white did not satisfy the conditions governing the representation of the earlier mark. Read more

14 Nov 2018

General Court: disclosure of earlier design cannot be proved by means of probabilities or suppositions

The decision of the EU General Court in Mamas and Papas Ltd v EUIPO, which concerned a registered Community design representing a cot bumper, shows that the parties should present their best evidence in proceedings not only before the court, but also before the EUIPO. Read more

14 Nov 2018

Should government act as defendant when private party appeals decision to cancel mark?

According to a proposal made by Norway’s Department of Justice in the context of the implementation of Directive 2017/2436, the government would no longer act as the counterparty when a decision to cancel a trademark is appealed to the district court. Read more

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Anti-counterfeiting

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9 Nov 2018

Rights holders beware: criminal raid action deemed to be act of unfair competition

In a ground-breaking decision, the Turkish Court of Appeals has held that a criminal raid action constituted an act of unfair competition and that the complainant should pay compensation to the defendant for damages incurred due to the raid. Read more

19 Oct 2018

Facebook’s WHOIS access woes, DPMA’s IP workshop for refugees, and Santa-Cruz leaves INAPI: news round-up

In our latest round-up, we look at the Croatian president talking up nation branding, Gucci voicing “reluctance” to work with Alibaba and JD.com, brand owners readying themselves for motion marks, and much more. Read more

12 Oct 2018

Coca-Cola dispute sparks censorship debate, Alfred Dunhill scores big in China, and Belt and Road IP cooperation: news round-up

In our latest round-up, we look at how brands should share bad news, why Chinese companies have been accused of “poor branding”, Silk Road member states strengthening IP cooperation, and more. Read more

21 Sep 2018

Deep dive into Apple counterfeit fight, Skripal poison pair trademark, and most valuable UK brands: news round-up

In our latest edition, we look at China and Singapore partnering up for an IP initiative, another trademark scam highlighted, a German court dealing a blow to ICANN, and much more. Read more

Brand management

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15 Oct 2018

Genericism: is the trademark education video the new norm?

The recent Velcro video was highly successful in generating discussion about the use of the company’s trademark, providing crucial insight into brand communication strategies. Read more

2 Oct 2018

Attack on the senses: a comparison of non-traditional marks

Practitioners need to be aware of the differences between obtaining protection for smell, taste and texture marks in the European Union and the United States. Read more

1 Oct 2018

Moving and shaking: securing protection for shapes and movement marks

With non-traditional trademark registrations on the rise, a nuanced understanding of the differences between obtaining protection in the European Union and the United States is crucial. Read more

28 Sep 2018

Sounds and colours: EU and US approaches to non-traditional marks

Following a rise in non-traditional trademark registrations, practitioners should be aware of the differences between obtaining protection in the European Union and the United States. Read more

Enforcement and litigation

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Today

Leading hotel management company prevails in opposition proceedings against CAFE FOUR SEASONS

Four Seasons Hotels (Barbados) Ltd has been successful in opposition proceedings against the Lithuanian figurative trademark CAFE FOUR SEASONS for food and drink services in Class 43. Read more

Today

General Court: black-and-white registration certificate does not satisfy requirements for representation of earlier figurative mark   

In opposition proceedings between Aldi Einkauf and Aldo Supermarkets, the EU General Court has held that submitting a copy of a national registration certificate in black and white did not satisfy the conditions governing the representation of the earlier mark. Read more

14 Nov 2018

General Court: disclosure of earlier design cannot be proved by means of probabilities or suppositions

The decision of the EU General Court in Mamas and Papas Ltd v EUIPO, which concerned a registered Community design representing a cot bumper, shows that the parties should present their best evidence in proceedings not only before the court, but also before the EUIPO. Read more

14 Nov 2018

Should government act as defendant when private party appeals decision to cancel mark?

According to a proposal made by Norway’s Department of Justice in the context of the implementation of Directive 2017/2436, the government would no longer act as the counterparty when a decision to cancel a trademark is appealed to the district court. Read more

Goverment/policy

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7 Nov 2018

New drafts amendments to patent, utility model, design and trademark legislation – what you need to know

The Ukrainian Ministry of Economic Development and Trade has released new draft amendments to the patent, utility model, design and trademark legislation for public review. Read more

24 Oct 2018

The state of statistics – academic claims “more can be done” with trademark data

A new academic paper has found that researchers and policymakers should make more use of trademark portfolio data – even using such information instead of patent data in some instances.  Read more

23 Oct 2018

GI face-off – debating current geographical indication protections

We bring together two organisations with different perspectives on geographical indications to discuss the best route forward for this unique form of protection. Read more

15 Oct 2018

Can beer that is not brewed in Lucerne be labelled as “beer from Lucerne”? The Supreme Court decides

The Swiss Supreme Court has held that beer sold under the name Lozärner beer (“beer from Lucerne”) would mislead the average consumer into believing that it was brewed in the city or canton of Lucerne. Read more

Law firms

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12 Sep 2018

Trademark procedures and strategies: France

Any natural person or legal entity can apply for a French trademark before the French Institut National de la Propriété Industrielle (INPI). The application can be filed by the owner itself or its representative. Read more

7 Sep 2018

The fall of the own-name defence

The ability to raise the own-name defence in Europe is about to come to an end. This article examines the consequences of recent own-name legislative changes for businesses in Europe. Read more

24 Aug 2018

A-Z of EU trademark court practice and performance: Netherlands to Slovenia

In the fourth of our five-part series, trademark counsel from law firms across Europe provide an overview of the performance of their countries’ EU trademark courts over the past two years. Read more

7 Aug 2018

Audi launches anti-counterfeiting campaign, YouTube brand safety fiasco and TMview expands: news round-up

In our latest round-up, we look at the expansion of the EUIPO’s TMview search platform, Scotch Whisky attaining GI protection in South Africa, Chinese trademarks continuing rapid growth rate, and much more. Read more

IP offices

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2 Nov 2018

Trademarks take centre stage at IP statistics conference

In this exclusive guest insight, CompuMark’s Robert Reading shares his takeaways – and why trademarks are taking a more prominent role in the analysis of IP analytics. Read more

2 Oct 2018

“The INPI facilitates the life of companies” – exclusive interview with new director general of French IP office

Pascal Faure, the new director general of INPI, reveals his immediate priorities in the role, including the introduction of new measures that will “strengthen the examination of trademarks” in France. Read more

2 Oct 2018

“The EUIPO should lead on enforcement” – trademark community reacts to Archambeau appointment

National IP offices within the European Union, key trademark associations and leading filing law firms in the EU react to the appointment of Christian Archambeau as the new executive director of the EUIPO. Read more

1 Oct 2018

Christian Archambeau officially appointed executive director of EU Intellectual Property Office

The EUIPO has confirmed that Christian Archambeau will take the reins permanently as executive director. His appointment comes at a time of turbulence at the EUIPO, with question marks still hanging over what Brexit could mean for EU trademark holders. Read more

Online

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12 Sep 2018

The future of trademarks

Global brand owners face increasing challenges in protecting, managing and enforcing their IP rights. These include challenges arising from new technologies, new business models and new markets. Read more

20 Jul 2018

“E-commerce platforms make huge efforts to protect brands’ rights”: exclusive interview with Groupon’s Pablo Rodriguez

Pablo Amat Rodriguez talks to us about his IP work at e-commerce brand Groupon. He reveals how he meets the distinctive IP challenges the trademark department faces, working with law firms, and much more. Read more

9 Jul 2018

Data authorities respond to ICANN call for help; WHOIS future left up in the air

The European Data Protection Board has responded to ICANN’s call for guidance to enable the development a GDPR-compliant WHOIS model. The document raises the prospect that a more conservative approach to WHOIS data publication will result. Read more

21 Jun 2018

Bitcoin, CNN and Elon Musk under attack: how scammers are stepping up their game

​​​​​​​An investigation from World Trademark Review has explored the evolving tactics of misleading and often malicious websites that pose as articles from well-known news outlets, with common trends including the use of cryptocurrency and Elon Musk to lure in users. Read more

Portfolio management

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12 Nov 2018

General Court: name of spa town eligible for registration for mineral waters

The EU General Court has annulled a decision of the EUIPO in which the latter had found that the mark DEVIN - the name of a Bulgarian spa town - for mineral waters was descriptive of the geographical origin of the goods. Read more

8 Nov 2018

CJEU confirms that categorisation as "colour mark" at time of filing is relevant when assessing validity

The Court of Justice of the European Union has confirmed that the categorisation of a mark as a “colour mark” at the point of filing is relevant when assessing its validity. Read more

7 Nov 2018

Hasbro retains MONOPOLY trademark

The registrar of the UK Intellectual Property Office has dismissed an application to revoke Hasbro’s trademark registration for MONOPOLY on the ground that the mark had not been put to genuine use. Read more

6 Nov 2018

Well-known healer’s name and alias protected to the benefit of his heirs

The Board of Appeal of Estonia has upheld oppositions filed by the heirs of well-known healer and writer Aleksander Heintalu (also known as Vigala Sass) against the registration of ALEKSANDER HEINTALU and VIGALA SASS. Read more

Trademark law

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12 Nov 2018

Preliminary draft Trademark Act: invalidity and cancellation proceedings

Following the approval of a preliminary draft law partially amending the Spanish Trademark Act in order to incorporate Directive 2015/2436, various consulting bodies have given their opinions on the draft text, highlighting certain aspects which they believed could be improved. Read more

9 Nov 2018

Important changes to Trademarks Act and Rules due January 2019 – what you need to know

The UK Trademarks Act and Rules are due to change following the implementation by the UK Intellectual Property Office of Directive 2015/2436. This update highlights the various changes due to come into effect in January 2019. Read more

7 Nov 2018

Compulsory conundrum: debate surrounds mandatory mediation for IP disputes

The introduction of mandatory mediation in Greece has faced criticism which eventually led to its suspension; a move that has left question marks over whether wider adoption of such a model is viable. Read more

29 Oct 2018

Enforcement in Italy: legal peculiarities and effectiveness of IP protection

There are advantages to protecting IP rights in Italy, including the possibility of starting legal action before registration has been granted in one of the 22 specialised courts across the country. Read more

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