Europe

United States tumbles down Brand Finance Soft Power Index due to covid-19 response

In a star-studded launch event, Brand Finance held a virtual conference with speakers including Hilary Rodham Clinton, Carl Bildt, and David Miliband.

United States tumbles down Brand Finance Soft Power Index due to covid-19 response
Live updates: IP offices implement measures in wake of coronavirus crisis
25 Feb 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.

EUIPO ditches fax and CDs; JPO implements earthquake procedures; Reebok brand up for sale – news digest
19 Feb 2021

EUIPO ditches fax and CDs; JPO implements earthquake procedures; Reebok brand up for sale – news digest

In our latest round-up, we look at Nestle selling its US bottled water business, Anaqua acquiring Quantify IP, Mombasa port seeing an influx of fake vaccine shipments, and much more.

Latest

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26 Feb 2021

General Court rejects late amendment of list of goods

This decision of the General Court highlights that, if an applicant wishes to overcome a distinctiveness issue by amending the list of goods/services, this should be done at the first instance. Read more

24 Feb 2021

General Court confirms lack of likelihood of confusion between PANTHÉ and PANTHER in Class 25

In an arguably surprising decision, the General Court has agreed with the EUIPO that there was no likelihood of confusion between the figurative mark PANTHÉ and earlier word and figurative marks PANTHER in Class 25. Read more

23 Feb 2021

Board of Appeal confirms lack of likelihood of confusion between FASHION TV marks

The Board of Appeal has upheld a decision of the Icelandic Intellectual Property Office finding that there was no risk of confusion between two word-and-design marks containing the word element ‘fashion tv’. 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

Anti-Counterfeiting

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17 Feb 2021

Corsearch acquires Entura, strengthening business’ anti-piracy arm

Entura will join Corsearch’s operations and expand the company’s offerings for fighting copyright infringement through online takedown capability. 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

15 Jan 2021

Notorious Markets List 2020: USTR resists call to include US platforms as Alibaba and Amazon remain

The Office of the US Trade Representative has released the findings of its 2020 Review of Notorious Markets for Counterfeiting and Piracy. Read more

13 Jan 2021

Tracking fakes: revealing the most popular regions for buyers of counterfeit goods

New research from WTR reveals where people searching for counterfeit goods are residing, uncovering a significant difference between brands. Read more

Brand management

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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

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

9 Feb 2021

Myanmar coup trademark impact; Under Armour drops NFL licensing deal; Boohoo buys Burton – news digest

In our latest round-up, we look at a joint EPO-EUIPO report showing the benefits of owning IP rights (especially if you are an SME), L Catterton gaining the upper hand in the bidding war for Birkenstock, and much more. Read more

2 Feb 2021

Asos buys Topshop and Miss Selfridge brands; Covishield injunction rejected; ICANN new breach notice – news digest

In our latest round-up, we look at Philip Morris International and the US Department of Homeland Security collaborating, Playboy in talks to acquire Lovers, the battle for Birkenstock heating up, and much more. Read more

Enforcement and Litigation

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18 Feb 2021

Mondelez wins lilac packaging case in Croatia

The Supreme Court has put an end to the long-running dispute between Kraft Foods Schweiz Holding GmbH (part of Mondelez International Group) and Croatian confectionery producer Kraš over the latter’s use of the colour lilac for its packaging. Read more

11 Feb 2021

General Court: milk substitute slogan has minimum degree of distinctive character required by Article 7(1)(b)

In a decision that clarifies the requirements for registering trademarks consisting of slogans, the General Court has annulled a EUIPO decision finding that the mark IT’S LIKE MILK BUT MADE FOR HUMANS was devoid of any distinctive character. Read more

8 Feb 2021

General Court upholds likelihood of confusion between bull wine marks

In opposition proceedings between two wine companies, the General court has confirmed that there was a likelihood of confusion between the marks SANGRE DE TORO and CABEÇA DE TOIRO. Read more

4 Feb 2021

Madrid Court of Appeal confirms sentence for commercialisation of products infringing musical groups’ trademarks

The Madrid Court of Appeal has upheld a trial court decision in which the defendants were sentenced to nine months’ imprisonment and ordered to pay a fine for illegally reproducing marks of musical groups, including those of Iron Maiden. Read more

Government/Policy

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3 Feb 2021

Covid-19 and post-Brexit Britain – Sandris Laganovskis on challenges of new EUIPO role

In an exclusive interview with WTR, the new EUIPO deputy director for international cooperation, Sandris Laganovskis, reveals the opportunities and challenges that he foresees in the role. Read more

2 Feb 2021

How the EUIPO’s Ideas Powered for Business fund plans to stimulate SME trademark filings

EUIPO deputy executive director Andrea Di Carlo sat down with WTR to detail last year’s work to engage SMEs and reveal the office's plans for 2021. Read more

28 Jan 2021

New UK customs notification procedure following Brexit departure from EU system

The United Kingdom has introduced a new procedure for notifying UK IP rights to the customs authority. As with many Brexit changes, the immediate effect is administrative, but with little substantive change. Read more

25 Jan 2021

A close look at the United Kingdom’s post-Brexit GI regime

In an exclusive guest post, experts at Hogan Lovells explore the current status of geographical indications in the United Kingdom – and what the future could hold for their protection. Read more

Law Firms

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22 Jan 2021

EUIPO filings in 2020: all the key stats and figures you need to know

With last year’s figures now available, despite a tumultuous 2020, trademark application volumes at the EUIPO hit a record high – as this week’s data analysis reveals. Read more

8 Jan 2021

LVMH completes Tiffany acquisition; AWS blow for Amazon; new USPTO deputy trademarks commissioner – news digest

In our latest round-up, we look at E & J Gallo Winery acquiring over 30 brands from Constellation, Taste Beauty being picked up by Centric Brands,  IPEC's new annual IP report, and much more. Read more

4 Jan 2021

Brexit: the long and winding road is not over yet

The transitional period may be over, but the Brexit saga is not. There are now numerous factors for trademark owners to bear in mind, with a host of new rules to become accustomed to. Read more

22 Dec 2020

Trademarks during the year of covid: exclusive insights from law firm experts in England and Israel

WTR presents exclusive insights on how the events of 2020 shaped the trademark practice of Chris McLeod from Elkington and Fife and Ronit Barzik-Soffer from Reinhold Cohn Group. Read more

IP Offices

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12 Feb 2021

France records its fourth year of trademark growth, hitting the 100,000 applications mark

Domestic brands are IP savvy and are particularly active users of WIPO’s Madrid system. Read more

8 Jan 2021

How the French IP office educates the public on IP systems

Pascal Faure, CEO of INPI, explains how the office engaged the public in IP matters in 2020 through online courses and annual awards. Read more

4 Jan 2021

The secret lives of trademark examiners: insights into five IP offices

Hard-working representatives from registries in Canada, France, Singapore, the United Kingdom and the United States reveal what makes them tick and how to guarantee a successful trademark application in their jurisdiction. Read more

28 Dec 2020

How to avoid a descriptive filing: examiners offer vital application guidance

Experts at three of the world’s busiest IP offices reveal what it takes for an application to pass key requirements on descriptiveness. 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

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

13 Jan 2021

The rise of clone perfume: a growing challenge for fragrance brands?

In an interview with WTR, the owner of a business that sells ‘smell-alike’ perfumes reveals why the popularity of cloned fragrances is on the rise, and why he believes using their own brand avoids any potential legal risk from major perfume companies. Read more

4 Jan 2021

New year, same wait for WHOIS data access clarity as governments look to exert pressure

While efforts to develop a global access system for WHOIS data continue, recent developments in the United States and the European Union suggest that governments are willing to require more of registries and registrars. Read more

Portfolio Management

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1 Feb 2021

Good news for Bacardi as General Court finds likelihood of confusion between 42 BELOW and BLEND 42 VODKA

The EU General Court has confirmed that there was a likelihood of confusion between the figurative mark BLEND 42 VODKA and Bacardi & Co Ltd’s earlier 42 BELOW marks in Classes 33 and 35. Read more

1 Feb 2021

IPEC considers post-sale confusion and passing off in fashion industry

The UK’s Intellectual Property Enterprise Court has handed a decisive victory to Italian fashion company Freddy SpA in a case that considers the role that passing off, patents and unregistered designs can play in combatting copycats in the fashion industry. Read more

22 Jan 2021

No likelihood of confusion between BIM FREELANCE and BIM READY due to relevant public’s high level of attention

In this arguably debatable decision, the EU General Court concluded - contrary to the EUIPO - that there was no likelihood of confusion between BIM READY and BIM FREELANCE for “training services” in Class 41. Read more

21 Jan 2021

A not so EASY task after all: easyGroup’s EASY mark found to be devoid of distinctive character

easyGroup’s attempt to strengthen its rights in the EASY family of marks has been thwarted by the UKIPO, which refused to register the mark EASY for various services in Classes 35, 39 and 43. Read more

Trademark law

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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

12 Dec 2020

EU image rights: when the product is us

In the absence of a harmonised EU law on image rights, individuals are forced to rely on a combination of copyright and human rights claims to protect their most unique asset online – their own image. Read more

12 Dec 2020

How to protect your most valuable rights: publicity and image

With millions of images shared online every day, striking a balance between the rights of the individual and freedom of expression is a complex task. Thankfully, various regulations can offer protection in the absence of specific publicity and image rights. Read more

Find an expert

Lucy Walker
Partner
Birmingham, United Kingdom
Barker Brettell LLP