Europe

From K-pop to Presley: inside the trademark portfolios of the music industry’s biggest names

When it comes to trademarks, some musicians are clearly a step ahead. For others, the need to consider protection provides a potential new client base for practitioners. We delve into the portfolios and filing trends of both global and local recording artists.

From K-pop to Presley: inside the trademark portfolios of the music industry’s biggest names
21 Mar 2019

European Union to accede to Geneva Act; Brexit uncertainty means United Kingdom poised to become GI battleground

The European Parliament's Legal Affairs Committee has endorsed the European Union acceding to the Geneva Act – a move that could propel the issue of geographical indications back to the top of the trade deal agenda as the United Kingdom looks to its post-Brexit future.  

15 Mar 2019

What Turkey’s domestic economic difficulties mean for brands and their advisers 

Political and economic circumstances have made it difficult for domestic brands to build value, which could prove to be a setback for future growth. However, this could also create opportunities for law firm practitioners.

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Today

Polo logo appeal dismissed: the importance of evidence of use and registrations

The EUIPO Board of Appeal has decided that a declaration of invalidity filed by Style & Taste against Polo/Lauren’s polo logo did not contain sufficient evidence to support the claim. Read more

22 Mar 2019

General Court upholds rejection of STREAMS trademark application

In DeepMind Technologies Ltd v EUIPO, the EU General Court has confirmed that the mark STREAMS was descriptive of goods and services in Classes 9 and 42 and should be refused under Article 7(1)(c) of EU Regulation 207/2009.  Read more

21 Mar 2019

General Court: consumers perceive signs as a whole

The EU General Court has dismissed an appeal of the Fifth Board of Appeals’ decision concerning the EU mark VERA GREEN and earlier LAVERA marks. The court held that consumers generally perceive signs as a whole and do not analyse their various details. Read more

20 Mar 2019

Patent Office rejects WHEN IN ICELAND opposition

A recent Icelandic Patent Office decision serves as a useful reminder that the evaluation of similarity as set out in the Trademarks Act should always involve a nuanced comparison of the marks. Read more

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Anti-counterfeiting

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12 Mar 2019

Alibaba reaches settlement, new Hong Kong IP director, and Swiss IP office issues fakes warning: news digest

In our latest round-up, we look at the New Zealand IP office issuing a stark warning against misleading mislead invoices, $1.1 million worth of counterfeits stopped on Canada-US border, and much more. Read more

1 Mar 2019

Vice YouTube takedown sparks outrage, Banksy wins IP case, and Macedonia mark update: news digest

In our latest round-up, we look at the Mongols biker gang keeping their logo trademark, how online uses of the words ‘fake’ and ‘replica’ are rising significantly, and much more. Read more

26 Feb 2019

Brazil calls for ‘.amazon’ delay, Swatch and Samsung face-off, and Lithuanian open IP data: news digest

In our latest round-up, we look at Jerry Seinfeld filing a lawsuit over a ‘counterfeit’ Porsche, a draft policy in India that could empower platforms to blacklist counterfeit sellers, and much more. Read more

8 Feb 2019

Irish Whiskey GI protection, no-deal Brexit anti-counterfeiting “travesty”, and Alibaba and eBay on fakes: news digest

In our latest round-up, we look at Brainbase raising money to bolster its licensing platform, the discovery of fake leukaemia drugs, the EUIPO turning to blockchain to fight counterfeiting, and much more. Read more

Brand management

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8 Mar 2019

From the old to the new: inside Mondelēz’s evolving brand portfolio strategy

The snack giant has traditionally focused on existing famous brands; however, the healthy living trend now presents both challenges and opportunity. Read more

6 Mar 2019

Instagram influencers: research finds few seek trademark protection as fake sponsorships revealed as brand risk

As rights holders increasingly work with social media influencers, we take a look at whether these online celebrities are seeking trademark protection and the opportunities and risks for brands. Read more

5 Mar 2019

Absolute last chance to have your say on the state of the trademark industry

Trademark practitioners have one more day to participate in WTR’s annual Global Trademark Benchmarking Survey. With just hours left, do not miss out. Read more

1 Mar 2019

How branding could be a golden opportunity for mining companies 

In an exclusive data analysis, we look at how mining companies have yet to appreciate the value of brand strength in an era of growing expectations around corporate social responsibility. Read more

Enforcement and litigation

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Today

Polo logo appeal dismissed: the importance of evidence of use and registrations

The EUIPO Board of Appeal has decided that a declaration of invalidity filed by Style & Taste against Polo/Lauren’s polo logo did not contain sufficient evidence to support the claim. Read more

22 Mar 2019

General Court upholds rejection of STREAMS trademark application

In DeepMind Technologies Ltd v EUIPO, the EU General Court has confirmed that the mark STREAMS was descriptive of goods and services in Classes 9 and 42 and should be refused under Article 7(1)(c) of EU Regulation 207/2009.  Read more

20 Mar 2019

Patent Office rejects WHEN IN ICELAND opposition

A recent Icelandic Patent Office decision serves as a useful reminder that the evaluation of similarity as set out in the Trademarks Act should always involve a nuanced comparison of the marks. Read more

19 Mar 2019

‘Funtime’ is over for Trespass

The Intellectual Property Enterprise Court has held that Luen Fat Metal & Plastic Manufactory Co Limited’s UK and EU trademarks for a series of word marks (FUNTIME, FUN TIME and FUN-TIME) are valid and have been infringed. Read more

Goverment/policy

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25 Feb 2019

UKIPO ranked most accessible IP office platform, as registries urged to improve website usability

New research from WTR has found that the IP offices of the UK, Brazil, Japan and Benelux have the most accessible website platforms for users, including those with motor or vision impairment.  Read more

20 Feb 2019

“We all need to embrace change, whether we like it or not”: exclusive interview with INTA CEO

WTR speaks with Etienne Sanz de Acedo about how INTA is evolving, as well as the need for trademark practitioners to embrace the new. Read more

15 Feb 2019

Ireland’s strong domestic market and exports boost GDP, but are brands ready for Brexit?

We analyse the Irish trademark landscape to see if brands are prepared for the planned Brexit exit day in just over a month, and how this market has developed over the past decade. Read more

7 Feb 2019

“The world is becoming an IP believer” – UK tops US Chamber of Commerce global trademark ranking

In a newly-released report, the US Chamber of Commerce has ranked the United States as having the best overall IP protection of 50 leading economies, with the United Kingdom topping the trademark ranking. Read more

Law firms

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26 Feb 2019

Just one week left to have your say on the state of the trademark industry

Trademark practitioners are running out of time to participate in WTR’s annual Global Trademark Benchmarking Survey. Do not miss out on the opportunity to share your successes, challenges and concerns.  Read more

26 Feb 2019

The data gap: what trademark practitioners want and how service providers are adapting

An exploration of what users feel is missing from data platforms and how these service providers are evolving their tools to capitalise on Big Data. Read more

21 Feb 2019

Trademark opportunities and threats: have your say on the state of the industry

Our annual research is designed to give counsel – both in-house and in private practice – the opportunity to share their successes, challenges and concerns from the past 12 months. Read more

13 Feb 2019

Not long left to let us know the challenges affecting your trademark practice

For the 11th year in a row, trademark practitioners are invited to participate in our annual Global Trademark Benchmarking Survey to let us know how practice is evolving to counter new threats and embrace new opportunities. Read more

IP offices

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13 Mar 2019

Don't panic? What the UK government’s second major Brexit defeat means for trademark owners

UK prime minister Theresa May suffered a second catastrophic defeat in as many months as the House of Commons rejected her Brexit deal last night. We take a look at what this latest development means for trademark owners. Read more

28 Feb 2019

An IP awareness revolution

In an exclusive article, the director general of the French National Institute of Industrial Property explains how the office has been creating cutting-edge industrial property awareness programmes across France – and why this is such a priority. Read more

27 Feb 2019

IP offices going above and beyond

In exclusive research, WTR looks at the innovative non-core tools and services being offered by national IP registries around the world. Read more

27 Feb 2019

IP offices of EU, Chile, Singapore and Spain named most innovative in the world

In exclusive research from WTR, the EUIPO has been ranked as the most innovative IP office in the world for the third year in a row. Closely behind are the registries of Chile, Singapore and Spain. Read more

Online

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11 Feb 2019

MARQUES warns of severe consequences of UDRP review “based upon bias, anecdotes and edge-cases”

MARQUES has written to ICANN calling for a data-led review of the UDRP when the process kicks off, stating that “there should be no changes to the UDRP unless such changes are based upon fact”.  Read more

11 Feb 2019

New domain name dispute resolution policy to be launched - what you need to know

In a welcome development for trademark owners, a new policy for the resolution of domain name disputes under the ‘.ua’ TLD will be launched on 19 March 2019.   Read more

29 Jan 2019

The Gleissner Files 2019: brand owners warned as IP office reveals staggering number of trademark applications

A major investigation by WTR can reveal that entrepreneur and serial trademark filer Michael Gleissner has stepped up his IP activity in recent months, with over 100 applications filed so far this year. Read more

29 Jan 2019

Prosecco GI dispute stalls trade deal, Brexit counterfeit fears, and new Benelux director general: news digest

In our latest round-up, we look at Swedish trademark legislation updating to align with the new EU directive, an controversial Oxford University trademark application, counterfeit wine in China, and much more. Read more

Portfolio management

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14 Mar 2019

CJEU considers trademarks with common element 'so' and finds likelihood of confusion

When is a single common element sufficient to create a likelihood of confusion? A decision of the Court of Justice of the European Union in a case involving the mark SO’BIO ĒTIC and earlier SO…? marks illustrates the difficulties in answering that question. Read more

11 Mar 2019

Blow for Apple as General Court finds that one cannot compare apples with pears

In a blow to US tech giant Apple Inc, the EU General Court has annulled a decision of the EUIPO in which the latter had upheld Apple’s opposition against the registration of the figurative mark PEAR for information and communications technology-related goods and services based on its famous apple logo mark. Read more

8 Mar 2019

Victory for Tambrands Inc as third party’s attempt to register TAMPAX mark fails  

The Appeal Division of the Lithuanian State Patent Bureau has upheld an opposition filed by Tambrands Inc, the owner of the TAMPAX mark, against the registration of the mark TAMPAX by a natural person. Read more

8 Mar 2019

From the old to the new: inside Mondelēz’s evolving brand portfolio strategy

The snack giant has traditionally focused on existing famous brands; however, the healthy living trend now presents both challenges and opportunity. Read more

Trademark law

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7 Mar 2019

New trademark law enters into force - what you need to know

A new Law on Trademarks, which aims to transpose Directive 2015/2436 into the national legislation, entered into force in Croatia on 15 February 2019. This update highlights the key changes for trademarks owners and applicants. Read more

4 Mar 2019

New Brexit guidelines give reassurance to rights holders, but attorneys’ rights remain uncertain

New guidelines reaffirm the UK's commitment to protecting existing EU trademarks and to recognising the priority date of pending European applications. But UK attorneys remain none the wiser about their EUIPO rights of representation. Read more

21 Feb 2019

Why every trademark lawyer should spend time in-house: exclusive interview with Bacardi’s Anna Panka

While legal know-how is critical for law firm practitioners, an understanding of the corporate business environment should not be underestimated. That is the message conveyed by Anna Panka, senior counsel at Bacardi, in an exclusive interview with WTR. Read more

31 Jan 2019

L’Oreal revealed as top filer of EU trademarks in 2018 as applications to EUIPO rise 5%

In an exclusive guest post, Robert Reading from CompuMark reveals the top corporate filers at the EUIPO in 2018 and looks at some of the key trends from the registry in the past 12 months. Read more

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