Europe

Enforcement data reveals destination shift for counterfeits originating in China

The true scope of the illicit trade of fake goods is hard to define, but analysis by Rouse indicates that Southeast Asia is a fast-rising hotspot

Enforcement data reveals destination shift for counterfeits originating in China
How should authors utilise trademarks to protect their literary works: the European perspective
7 Aug 2020

How should authors utilise trademarks to protect their literary works: the European perspective

In the second of this two-part piece, we speak to legal experts to explore the role that trademarks could play in the fight against book piracy in Europe.

Live updates: IP offices implement measures in wake of coronavirus crisis
6 Aug 2020

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.

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6 Aug 2020

The CJEU does not distinguish between fashion wear and outdoor wear

The Court of Justice of the European Union has found that weather-protective outdoor clothing and fashion streetwear were not independent sub-categories of goods in relation to Class 25. Read more

5 Aug 2020

General Court provides guidance on weak trademark elements

In these opposition proceedings involving the marks MEDIFLEX EASYSTEP and STEPEASY, the goods relating to footwear survived the opposition due to the weakness of the elements ‘step’ and ‘easy’ in relation to such goods. Read more

4 Aug 2020

Royal Family trademark feud; Uganda joins TMclass; counterfeits seized in Zhejiang – news digest

In our latest round-up, we look at how Microsoft’s bid for TikTok is still on the table, Victoria Beckham launching on Tmall Global, Kappa Japan (and associated IP assets) being sold, Monster Energy in a dispute with Bang Energy, and much more. Read more

3 Aug 2020

Reputation and the power of the influencer: SUGAR BEAR HAIR v BEAUTY BEAR

This case suggests that the reputation of celebrities and influencers can effectively be transferred to the brands and trademarks that they endorse. Read more

Anti-Counterfeiting

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28 Jul 2020

Massive anti-counterfeiting operation in China; Ukraine fake pharma crackdown; Coronavirus band trademark – news digest

In our latest round-up, we look at how American consumers are changing their brand preferences during covid-19, a bid for the Brooks Brothers brand, the Beijing IP Court invalidating a 3D trademark, and much more. Read more

20 Jul 2020

Good news for brand owners as Denmark introduces Product and Market Surveillance Law

In a boost for brand owners, the Danish Parliament has passed the Product and Market Surveillance Law, which provides increased powers to the authorities to take action against online retailers. Read more

10 Jul 2020

Amazon to list seller names and addresses; Google launches trademark initiative; UK Intellectual Property Office Brexit preparations – news digest

In our latest round-up, we look at Kazakhstan turning to technology to combat counterfeits, Rangers football club refreshing its brand, a Lady A lawsuit, and much more. Read more

8 Jul 2020

EUIPO top filers, China litigation data, diversity in trademarks, and much more: WTR’s summer edition now available

The summer issue of WTR is now available to subscribers; and includes an exploration of how private investigators are being employed by rights holders, analysis on the IP effects of the covid-19 pandemic, and much more. Read more

Brand management

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31 Jul 2020

Why scalability is key to service provider M&A activity: exclusive interview with OpSec CEO

WTR sits down with OpSec CEO Selva Selvaratnam to discuss the market for legal service providers and the Clarivate-CPA Global merger. Read more

30 Jul 2020

Manchester United crowned champions of trademarks Premier League; Messi tops player ranking

New research conducted by WTR can once again reveal that Manchester United has the biggest trademark portfolio of any global football club by a wide margin. Read more

29 Jul 2020

Clarivate and CPA Global to merge; “transformative combination” will shake up IP service provider market

Clarivate has today announced an agreement to merge with management software company CPA Global, a deal described as “a natural next step for both businesses”. Read more

29 Jul 2020

Time is running out to have your say on whether non-legal trademark services suppliers are delivering what you need

WTR needs your views on trademark search, watch and portfolio management services. Read more

Enforcement and Litigation

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31 Jul 2020

General Court highlights need to prove “relatively constant” use of mark where sales volume is low

This decision of the EU General Court shows that the smaller the commercial volume of the exploitation of a mark, the more important it is for an opponent to produce additional evidence. Read more

30 Jul 2020

Passing-off claim appears more virtual than real in STEALTH case

This decision of the appointed person on appeal from a UKIPO decision highlights the importance of having sufficient evidence of the date of first actionable use in a dispute involving passing off. Read more

29 Jul 2020

General Court highlights differences between raw material goods and finished products

This decision of the EU General Court shows that raw material goods and manufactured/finished products are most likely to be dissimilar due to differences in nature, purpose and distribution channels. Read more

29 Jul 2020

Barcelona Court of Appeal recognises well-known status of DINOSAURUS mark and declares use of GALLESAUROS infringing

The Barcelona Court of Appeal has held that the commercialisation of dinosaur-shaped biscuits under the sign GALLESAUROS constituted infringement of the well-known DINOSAURUS mark. Read more

Government/Policy

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28 Jul 2020

Brexit: UKIPO launches consultation to protect UK attorneys in change to address rules

The UK Intellectual Property Office has launched a public consultation with regard to a proposed change to its address for service rules, to be implemented once the Brexit transition period ends. Read more

20 Jul 2020

Food and beverage industry the new brand restrictions battleground as calls for action escalate

The food industry is fast becoming the focus of brand restrictions, with new calls for action against unhealthy foods in the United Kingdom and concern over Mexico’s new labelling regime culminating in a missive from INTA last week. Read more

16 Jul 2020

A connected world: learnings from the first internationally linked trademark database

In an exclusive guest post, academics in Australia share findings from their new study into the first database that links equivalent trademarks across national offices into a single comprehensive offering. Read more

8 Jul 2020

New specialised IP courts in Poland should make EU and domestic case law consistent

Five specialised IP courts open this month but question marks remain over staffing and training. Read more

Law Firms

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27 Jul 2020

Dyson, Jack Daniels, Walmart and more join expert roster for WTR Connect

WTR can now reveal more speakers to our upcoming WTR Connect event, including experts from Amazon, ASOS, Dyson, Gilead, Jack Daniels, SuperDry and Walmart. Read more

17 Jul 2020

UK is battling Brexit negotiations and the coronavirus, but it is still on track for its biggest trademark year yet

The first week of July was the busiest the UKIPO has ever seen, putting to rest any fears that the coronavirus pandemic would have lasting effects on application levels. Read more

14 Jul 2020

Experts from Amazon, GSK, Hugo Boss, Sony, Target and Disney among first confirmed participants for WTR Connect

WTR can now reveal the first confirmed participants to our upcoming WTR Connect event, including David Gooder, USPTO commissioner of trademarks, and experts from companies including Burberry, Starbucks and Under Armour. Read more

8 Jul 2020

Increased need for disability support in IP profession, shows IP Ability survey

Chris Clarke takes a look at the results of IP Ability’s inaugural industry survey and the extent of issues faced by those in the IP profession. Read more

IP Offices

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8 Jul 2020

The top filers and agility in action: inside EUIPO operations

World Trademark Review’s annual EUIPO focus assesses current office processes, reveals the most proactive filers and explores how the agency has responded to the impact of covid-19 on its employees, users and offerings. Read more

3 Jul 2020

New trademark law in Cyprus; Burger King trolls McDonald’s; INTA looking for tomorrow’s leaders – news digest

In our latest round-up, we look at Uber looking to bolster its food delivery unit, China approving 33 IP centres, the EUIPO unveiling an SME offering, and much more. Read more

19 Jun 2020

Kenya trademark removal risk; warning over “egregious” scam email; ‘.brands’ scrap heap – news digest

In our latest round-up, we look at AT&T considering the sale of Warner Bros Interactive, a sushi trademark dispute, ICANN and Global Cyber Alliance partnering up, and much more. Read more

18 Jun 2020

How the EUIPO is supporting SMEs amid an economic crisis

EUIPO deputy executive director Andrea Di Carlo reveals the steps that the office is taking to help vulnerable small businesses during the covid-19 pandemic. Read more

Online

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21 Jul 2020

“The death of trademark” – study finds that AI could adversely affect brand usage

A new research paper has looked at how improvements in AI could affect trademark doctrine – with the academic behind the study claiming that “trademarks may become less important in the future”. Read more

21 Jul 2020

What constitutes “using” a sign under Article 5(1) of Directive 2008/95?

The Court of Justice of the European Union has clarified that, under Article 5(1) of Directive 2008/95, an infringer will only be responsible for removing infringing content which it has placed online itself. Read more

26 Jun 2020

How the virtual boutique finds the middle ground between law firm models

IP attorney Julia Anne Matheson explains why the Potomac Law Group has developed a business model that could shape the future of the trademark industry. Read more

24 Jun 2020

Brand protection challenges of domain management: 83% of companies at risk of hijacking, report shows

An alarming number of major organisations do not have sufficiently protected domains, says a new report, and such risk has significant brand protection implications. Read more

Portfolio Management

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27 Jul 2020

Amendments to the Trademarks Law 84/1998 - key points highlighted

Amendments to the Trademarks Law (84/1998) entered into force on 13 July 2020, transposing the provisions of the Trademarks Directive (2015/243) into national legislation. This update highlights the most significant changes for trademark owners and practitioners. Read more

24 Jul 2020

Sorry Big Dairy, milk alternatives (and the brands that support them) are here to stay

Oatly, a prominent Swedish oat milk maker, is now worth over $2 billion. Plant-based milk brands are quickly consolidating the market, and their quirky, hard-hitting campaigns are attracting a whole range of consumers. Read more

23 Jul 2020

Cross and heart equals likelihood of confusion, according to UKIPO

This decision of the UK Intellectual Property Office underscores that, where figurative marks share some of the same or similar elements, a likelihood of confusion is possible even when the marks contain additional, different device elements. Read more

22 Jul 2020

SWISS RE – WE MAKE THE WORLD MORE RESILIENT found to not be misleading

This decision of the Federal Administrative Court will be welcome news for global companies registered in Switzerland which seek to protect signs that incorporate geographical indications and use Switzerland as the starting point of their international filings. Read more

Trademark law

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13 Jul 2020

Proposed changes to the industrial property law – what you need to know

Albania’s General Directorate of Industrial Property has published proposed amendments to the Law on Industrial Property for public consultation. This update reviews the key proposals that IP rights owners and practitioners should be aware of. Read more

9 Jul 2020

Ferrari partially loses iconic mark as EUIPO’s non-use requirement claims latest victim

Just 39 250 GTOs were built between 1962 and 1964, opening the brand up to a non-use opposition at the EUIPO. Read more

8 Jul 2020

Mirror image: using UK and US case law to protect publicity rights

The lack of a single, codified body of law to explicitly protect image or publicity rights on either side of the Atlantic means that high-profile individuals must draw from a variety of causes of action and legal tools to protect their interests. Read more

7 Jul 2020

Reform of the Trademark Act transposing Directive 2015/2436: key amendments and new possibilities

Following the reform of the Trademark Act (the second part of which came into effect on 20 May 2020), national trademarks may become a more attractive prospect for applicants developing their portfolio strategies. Read more

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Linda K McLeod
Partner
Washington DC, United States
Kelly IP