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Europe

FIFA licensing boon; former USPTO director rejoins law firm; INAPI hosts first gender roundtable – news digest

In our latest round-up, we look at GoDaddy increasing its TLD portfolio, Timberland’s trade dress getting the boot, the Peruvian IP office warning political parties to respect IP, and much more.

FIFA licensing boon; former USPTO director rejoins law firm; INAPI hosts first gender roundtable – news digest
Luxury doyen Hermès is thriving, thanks to unwavering dedication to its traditional brand values
9 Apr 2021

Luxury doyen Hermès is thriving, thanks to unwavering dedication to its traditional brand values

The French boutique is taking market changes in its stride and its popularity is growing as a result

What the rest of the world can learn from Latvia’s dealings with serial filer Michael Gleissner
8 Apr 2021

What the rest of the world can learn from Latvia’s dealings with serial filer Michael Gleissner

The long read: The voracious filing activities of entrepreneur Michael Gleissner have flummoxed IP experts around the world for years. A closer look at a series of courtroom battles in one European country could help to pull back the curtain.

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8 Apr 2021

New WTR report charts the rise of mass filers and impact on trademark ecosystem

Whether they are specific individuals or particular jurisdictions, the rise to prominence of mass filers over the past few years has had a significant impact on the trademark landscape. Read more

8 Apr 2021

Live updates: IP offices implement measures in wake of coronavirus crisis

As the novel coronavirus epidemic continues to spread across the globe, WTR provides an updated look at measures that national IP offices have launched in response. Read more

8 Apr 2021

The EUIPO experience

The rise of Chinese filers is a global phenomenon. Although this report focuses on the USPTO experience, it is instructive to compare activity rates elsewhere. Therefore, we turn our attention to the EUIPO. Read more

7 Apr 2021

General Court confirms invalidity of EUTM on ground of bad faith due to prior contractual relationship

This decision highlights the case-by-case approach of the General Court when it comes to bad-faith filings - an area which still requires some clarification. Read more

Anti-Counterfeiting

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6 Apr 2021

Burger King trolls McDonald’s; INTA weighs in with EUIPO amicus brief; Mondelez and Grenade tie-up – news digest

In our latest round-up, we look at the CCFN welcoming the USTR’s stance on geographical indications, Brand Finance marking its silver anniversary, the Philippines taking over the ASEAN IP cooperation group, and much more. Read more

30 Mar 2021

France victorious in ‘france.com’ dispute; USPTO issues credential warning; EUIPO gets Green Apple award – news digest

In our latest round-up, we look at the UKIPO welcoming its position on the US Chamber 2021 Global IP Index, a CBD trademark spat resolving, the Chilean IP Office updating its trademark renewal system, and much more. Read more

29 Mar 2021

A Brexit headache? How changes to the UK customs recordals process impacts anti-counterfeiting strategies

In an exclusive guest post, experts at IP law firm Marks & Clerk set out trends in counterfeit seizures since Britain’s exit from the EU, and offer advice on managing applications for enforcement action. Read more

26 Mar 2021

Taylor Swift settles Evermore dispute; Facebook partners with UKIPO; All Gas No Brakes brand ownership – news digest

In our latest round-up, we look at Burberry partnering with a video game developer, the EUIPO winning an award, the Peruvian IP Office auctioning off property owned by IP infringers, and much more. Read more

Brand management

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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

25 Mar 2021

Green brands: how trademark law can promote sustainable business practices

The long read: While much has been written about how to protect green innovations using patents or utility models, trademarks could prove an unexpected ally for advocates of sustainability, especially when it comes to developing the market for environmental products and services. Read more

23 Mar 2021

How AI could impact trademarks and designs: UK government weighs in

Following a three-month consultation on IP and AI, the UK government has revealed some of the ways that AI is expected to play a role in trademark and design operations in the future. Read more

22 Mar 2021

BBC’s pragmatic domain approach; brand purpose; counterfeiters using live-streams  – takeaways from WTR Connect

Takeaways from the final three days of WTR Connect, including insights from brand professionals at Vodafone, Unilever, Coty, Dyson, Reckitt Benckiser and the International Anticounterfeiting Coalition. Read more

Enforcement and Litigation

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7 Apr 2021

Uh-Oh Polly - the importance of unregistered design rights in the fashion industry

Where does inspiration end, and unlawful copying begin? This was the question considered by the High Court of England and Wales in this dispute between rival companies in the bodycon and bandage garments sector. Read more

1 Apr 2021

General Court considers concept behind TIME

In this dispute involving the marks THE TIME and TIMEHOUSE, the EU General Court rejected the argument that the EUIPO had erred in failing to apply the counteraction theory, under which conceptual differences may counteract visual and phonetic similarities. Read more

31 Mar 2021

Supreme Court: no additional circumstances required in the assessment of descriptive trade names

In this dispute between British cheese manufacturer Dairy Partners and Dutch dairy company DOC Dairy Partners, the Dutch Supreme Court has put an end to longstanding uncertainty concerning the protection of descriptive trade names. Read more

30 Mar 2021

IPEC: evidence of use is insufficient to show that a neologism is a badge of origin

This UK case involving the term ‘Cryptoback’ highlights the difficulties faced by a party seeking to rely on goodwill associated with a newly-coined word used in relation to a particular product or service. Read more

Government/Policy

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20 Mar 2021

Now the genie is out the bottle, expect IP enforcement to remain high on government agendas

In our latest Saturday opinion column, we reflect on recent collaborations between enforcement authorities, IP offices and rights holders. Read more

19 Mar 2021

Tiger King trademark fight; USPTO AI use; Sakpatenti to launch mediation – news digest

In our latest round-up, we look at ICANN being requested to hit the pause button on WHOIS reforms, adidas and Peloton collaborating, and much more. Read more

18 Mar 2021

From Skykick to Brexit: the five EU developments every trademark expert needs to know about

The long read: We examine key takeaways from the biggest cases of the past 12 months and take a deep dive into what Brexit means for EU trademark owners. Read more

17 Mar 2021

Gleissner trademark auction to go ahead: brand owners given chance to buy millionaire's Latvian marks

Over 900 registrations owned by "trademark troll" Michael Gleissner are set to be auctioned, with WTR exclusively compiling a list of the marks on offer and brand owners asked to express any interest in bidding within 30 days. Read more

Law Firms

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26 Mar 2021

"There is always more work to be done": Baker McKenzie’s first-ever D&I chief on global diversity efforts

Baker McKenzie’s first-ever chief inclusion and diversity officer, Anna Brown, reveals how the firm draws on its global resources to support diversity, equity and inclusion through clear policy, cross-functional leadership and community outreach programmes. Read more

12 Mar 2021

Lyft praised for user ban; ICANN71 goes virtual; Vasectomy Mayhem dispute – news digest

In our latest round-up, we look at a new Harry and Meghan trademark hitting headlines, St Louis law enforcement seizing counterfeits, Lacoste teaming up with Bruno Mars, and much more. Read more

5 Mar 2021

USPTO ends specimen protest email; New York Times drops Time lawsuit; UK debut for Amazon Fresh – news digest

In our latest round-up, we look at a groundbreaking report on IP in Mexico, INTA holding events marking International Women’s Day, Apollo acquiring craft retailer Michaels, and much more. Read more

19 Feb 2021

Positive intention for UK address for service rule changes, but data shows muted impact

The UK trademark filing landscape is changing, with new agents coming onto the scene and early analysis indicating limited impact of the new local address for service requirement. Read more

IP Offices

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19 Mar 2021

Trademarks within services are trending upwards, indicating a shift in economies away from goods

Nice class data gives insight into business activity within major markets. Among other things, it reveals how ongoing trends have been disrupted by the pandemic. Read more

16 Mar 2021

EUIPO approves blockchain platform; NFT trademark mystery; SHOP SAFE Act hearing set – news digest

In our latest round-up, we look at how the pandemic is changing consumer habits, Treasury Wine inking a licensing deal for its US brands, Iran joining the Madrid e-filing community, and much more. Read more

10 Mar 2021

The effect of the covid-19 pandemic on trademark applications

Statistics recently released by TURKPATENT have revealed how trademark filings were affected by the covid-19 pandemic throughout 2020 and how the figures compared to those of the previous year. Read more

9 Mar 2021

Innovation at the Benelux IP Office: spotlight on cutting-edge tools and services

In an exclusive guest post, the Benelux IP Office reveals its innovative non-core tools and services for trademark users – and some of those planned for the future. Read more

Online

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15 Feb 2021

81,000 ‘.eu’ domain names hang on the Brexit precipice

EURid has announced that it had suspended over 81,000 ‘.eu’ domain names held by registrants citing GB/GI as country code pursuant to the end of the United Kingdom’s 11-month Brexit transition period. Read more

9 Feb 2021

Clubhouse spat as $1 billion social network labelled a “bully” over app takedowns

The owner of the registered trademark CLUBHOUSE has accused the rapidly-growing social network app Clubhouse – which has garnered fans including Elon Musk – of spuriously seeking the removal of his app from marketplaces. Read more

22 Jan 2021

iaidō launch adds new player to the IP legal services provider market

Matching business intelligence with a case management system infrastructure, the dual launch aims to provide innovation that the service provider landscape is currently lacking. Read more

21 Jan 2021

How to manage the brand risk of social media’s ‘cancel culture’

An online spat between authors highlights the brand risk associated with social media influencers and cancel culture, one brand expert says. Read more

Portfolio Management

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29 Mar 2021

The Kerry trademark wars: General Court confirms likelihood of confusion between KERRYGOLD and KERRYMAID - but only for non-English speakers

The EU General Court has confirmed that there was likelihood of confusion between KERRYGOLD and KERRYMAID for certain goods in Classes 29 and 30 for the large part of the relevant public who are not aware of the geographical significance of ‘kerry’. Read more

26 Mar 2021

PUMA v PUMA-SYSTEM: reputed trademarks and the significance of the proximity between the goods and services

This decision of the EU General Court highlights the importance of providing solid arguments in relation to the existence of a link between two marks - even for trademarks with an exceptional reputation. Read more

25 Mar 2021

General Court confirms likelihood of confusion between HAUZ and HOUZZ

The EU General Court has issued three decisions in parallel proceedings confirming the existence of a likelihood of confusion between HAUZ and HOUZZ for Class 20 goods, including furniture and furnishings. Read more

23 Mar 2021

Heartfulness creator fails to prove that mark functions as source indicator

The EU General Court has confirmed that Sahaj Marg Spirituality Foundation’s mark HEARTFULNESS - which was created by Sahaj Marg to designate a relaxation and meditation technique - was descriptive and lacked distinctiveness. Read more

Trademark law

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23 Mar 2021

No registration or proof of use, no problem: how the Turkish IP system supports all legitimate rights holders

Co-published: Registering a trademark grants its owner a number of advantages, but the Turkish Trademark Law does not leave unregistered rights holders defenceless – even when their marks are not in use in Turkey. Read more

15 Feb 2021

International registrations, Brexit and trademarks in the Crown dependencies and Gibraltar

In a guest piece, Julius Stobbs, founder of Stobbs, details the current requirements for potential trademark registrants in these unique jurisdictions. Read more

17 Dec 2020

Bentley Clothing prevails against Bentley Motors but laments enforcement costs for small businesses

Bentley Motors has lost its appeal against a ruling in a long-running dispute with Bentley Clothing. However, the clothing company's director has slammed the current legal system. Read more

14 Dec 2020

The evolution of EU design law: what you need to know

The review of design law in the EU is a hot topic following last month’s European Commission report. In an exclusive guest post, Andrea Leonelli from Allen & Overy looks at the findings and what could happen next. Read more

Trending

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France victorious in ‘france.com’ dispute; USPTO issues credential warning; EUIPO gets Green Apple award – news digest

2

Live updates: IP offices implement measures in wake of coronavirus crisis

3

A Brexit headache? How changes to the UK customs recordals process impacts anti-counterfeiting strategies

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EU image rights: when the product is us

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Taylor Swift settles Evermore dispute; Facebook partners with UKIPO; All Gas No Brakes brand ownership – news digest

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Karin Becks
Partner
Breda, Netherlands
Arnold & Siedsma
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