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Europe

Brexit, post-coronavirus events, and influencing policy: interview with ECTA’s incoming president

WTR sits down with the new president of the European Communities Trademark Association (ECTA) to get the inside track on ECTA’s priorities and how the organisation is maintaining its mission in a covid-19 world.

Brexit, post-coronavirus events, and influencing policy: interview with ECTA’s incoming president
Live updates: IP offices implement measures in wake of coronavirus crisis
1 Jun 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.

Stuck in lockdown – it might be time to swipe right? Dating app filing patterns analysed
29 May 2020

Stuck in lockdown – it might be time to swipe right? Dating app filing patterns analysed

How popular dating apps have been able to capitalise on lockdowns, strengthening consumer connections and taking the opportunity to reinvent the online dating landscape

Latest

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Today

General Court confirms that Community design for wood-splitting tool is invalid

In Bergslagernas Järnvaruaktiebolag v EUIPO, the EU General Court has confirmed that registered Community design representing a wood-splitting tool was invalid on the ground it was devoid of individual character. Read more

1 Jun 2020

Appointed person does not accommodate application for HH HOTELS

Thomas Mitcheson QC, sitting as an appointed person, has dismissed an appeal against a successful opposition to a UK trademark application for the mark HH HOTELS based on the earlier mark NH HOTELS. Read more

29 May 2020

CJEU issues preliminary ruling on concept of use in the course of trade

Following a request for a preliminary ruling by the Supreme Court of Finland, the Court of Justice of the European Union has clarified the concept of ‘use in the course of trade’ under Article 5(1) of the EU Trademarks Directive (2008/95/EC). Read more

28 May 2020

Final chance to share your insights on private investigators and brand protection

There’s just a couple of days left for WTR readers to share their perspective on how private investigators are assisting their brand protection work, and the challenges currently being faced when working with third-party investigators. Read more

Anti-Counterfeiting

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20 May 2020

How do private investigators assist in brand protection cases?

WTR readers have a last chance to share their perspective on how private investigators are assisting their brand protection work, and the challenges currently being faced when working with PIs. Read more

12 May 2020

A new normal: trademark community on life during and after the coronavirus pandemic – exclusive survey results

New research from WTR reveals the brand protection challenges being faced by trademark professionals during the covid-19 crisis, finding practitioners facing significant salary cuts, increased infringement and the spectre of budgets being slashed. Read more

6 May 2020

Private investigators and brand protection: have your say

WTR is inviting trademark industry professionals to share their perspective on how private investigators (PIs) are assisting with brand protection work, and the challenges currently being faced when finding and working with PIs. Read more

4 May 2020

USTR hits out at EU GI regime, while China remains top of priority watch list

The Office of the US Trade Representative has used this year’s Special 301 Report, which assesses the effectiveness of IP protection around the world, to rebuke the current EU geographical indications regime for its “negative market access effects” on US producers and traders. Read more

Brand management

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26 May 2020

Manchester United targets Football Manager; Alibaba cooperation call; new gTLD use rising – news digest

In our latest edition, we look at China hitting back at covid-19 infringers, Off-White continuing to seek a red zip-tie trademark, IP complaints going digital in Bahrain, and much more. Read more

22 May 2020

In times of crisis consumers seek out familiar, comfortable food and beverage brands, creating opportunity

Slumping economies and ongoing lockdown orders present opportunities for the food and drink industry’s bigwigs to recapture market share from challenger companies Read more

19 May 2020

“A veiled threat” – UK government releases draft EU free trade agreement with geographical indications omitted

The UK government has published an outline of a free trade agreement with the European Union which omits geographical indications (GIs) – a move that suggests GIs will remain a contentious issue as negotiations continue. Read more

18 May 2020

“Information is our most effective weapon” – insights from the frontline of scambaiting

Talking to WTR, the content creator behind the popular Atomic Shrimp channel reveals the changing nature of scam emails and outlines what major brands can do to more effectively combat this long-time foe. Read more

Enforcement and Litigation

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28 May 2020

Impact of covid-19 pandemic on grace periods and obligation of use

This update considers the impact of the covid-19 pandemic on the grace periods set forth by the Turkish Industrial Property Code, and examines whether the restrictions imposed by the government may constitute a justified reason for non-use of a trademark. Read more

27 May 2020

Impact of covid-19 pandemic on time frames in judicial and administrative matters

Following the declaration of a state of emergency on 12 March 2020, the Slovenian government  imposed several measures aimed at slowing the spread of the virus. This update focuses on the measures that affected time frames in judicial, administrative and other public law matters. Read more

26 May 2020

CJEU provides guidance on signs consisting exclusively of shape of goods necessary to obtain technical result

In Gömböc, the Court of Justice of the European Union has held that, in order to establish whether a sign consists exclusively of the shape of goods which is necessary to obtain a technical result, the assessment does not have to be limited to the graphic representation of that sign. Read more

22 May 2020

YORKSHIRE GOLD for e-liquids vaporised by appointed person

This case highlights an emerging issue for well-known food and confectionery brands, which may find themselves in trademark disputes with e-liquid companies in the future. Read more

Government/Policy

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1 May 2020

Star Wars hashtag controversy; Puma and Nike spar over FOOTWARE; EU geographical indications denounced – news digest

In our latest round-up, we look at Amazon verifying sellers using online video, fashion brands taking a community angle, exhausting the covid-19 price gougers, a joint message from the USPTO and EPO, and much more. Read more

29 Apr 2020

“Brexit hasn’t been forgotten”: exclusive interview with newly elected CITMA president

We sat down with Richard Goddard to discuss the organisation’s strategic direction for his two-year tenure, the spectre of Brexit and how the institute is adapting to current conditions. Read more

24 Apr 2020

IP Office of Singapore postpones IP Week; 3M files more lawsuits; registrations rise in Turkey – news digest

In our latest round-up, we look at the Uzbekistan IP Office warning of a rise in fraud, the Korean and Saudi IPOs pledging better cooperation, four ‘.brands’ preparing to exit, and much more. Read more

20 Apr 2020

Virtual networking: how trademark practitioners are connecting during coronavirus lockdown

With much of the trademark community unable to engage in in-person communication, WTR takes a look at some of the innovative virtual networking initiatives from various associations and service providers. Read more

Law Firms

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27 May 2020

Digital receptions: how law firms are approaching networking for INTA’s virtual 2020 Annual Meeting

With the INTA confirming that its 2020 Annual Meeting will be a virtual event, law firms and service providers must now decide whether to host a networking reception in a digital environment. Read more

26 May 2020

“The heresy I am happy to question”: Trademark Owners Association's managing director outlines plans for legal services brand

WTR sat down with the managing director of the Trademark Owners Association, to get more on the decision to revive the TMOA brand and what the future holds Read more

15 May 2020

St Andrews Links Trust lands in trademark bunker; new Benelux online tools; Gleissner covid-19 donation – news digest

In our latest edition, we look at Hard Rock International acquiring the rights to Hard Rock Hotel & Casino, the KIPO president getting dunked with flowers, and more. Read more

6 May 2020

Michael Gleissner defeated at the EUIPO: lessons from the lawyers at the helm

In an exclusive guest post, lawyers from international law firm Bird & Bird present an inside look at a case they were recently involved in featuring notorious trademark filer Michael Gleissner. Read more

IP Offices

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27 May 2020

Trademarks rocket while designs level off: UKIPO releases latest annual filings data

The UKIPO has published its annual Facts and Figures Report. We drill down into the data to reveal the most notable findings. Read more

21 May 2020

Trademark filing levels recover but long-term picture remains in doubt

After an initial slump in global trademark filing levels in the wake of the coronavirus outbreak, data reveals that numbers have started to return to normal at several major offices. Read more

15 May 2020

State of emergency lifted in Serbia: how to calculate deadlines in IP matters

Following the lifting of the state of emergency in Serbia on 6 May 2020, this update reviews how deadlines will now be calculated for administrative and court proceedings. Read more

8 May 2020

Trademark applications will drop during the coronavirus crisis, but globalisation offers hope of a speedy recovery

A new report from TrademarkNow explores the impact of two major recessions on USPTO filings, giving insight into what is to come. Hint: it’s not all doom and gloom. Read more

Online

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14 May 2020

Nominet suspends over 180 ‘.uk’ covid-19-related domain names

The covid-19 pandemic is increasing the risk of phishing attacks, as larger numbers of people are using the Internet due to confinement and searching online for information concerning covid-19. Read more

6 May 2020

Complainant gets a grilling under ‘.nl’ regulations

In a recent decision under the Dispute Resolution Regulations for ‘.nl’ Domain Names, a WIPO panel has found that the dispute involved complex contractual considerations outside of the scope of the regulations, which were intended to deal with clear-cut abuse. Read more

28 Apr 2020

China vows counterfeit crackdown; astronaut trademark lawsuit; Trump issues World IP Day proclamation – news digest

In our latest edition, we look at a cruise line filing a trademark application for sanitary masks, INTA opening up nominations for the Tomorrow’s Leader Award, a covid-19 opportunist’s “genius” plan unravelling, and much more. Read more

21 Apr 2020

Proof of targeting necessary under ‘.se’ Policy

In a decision under Paragraph 7 of the ‘.se’ Policy, a WIPO arbitrator has found that it was unclear whether the domain name holder was targeting the petitioner and that the dispute may exceed the scope of the policy. Read more

Portfolio Management

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19 May 2020

Anticipate your divorce (continued): CJEU considers existence of economic link between parties

The decision of the Court of Justice of the European Union in Gugler France SA v Gugler is of particular importance to companies composed of various entities that act independently. Read more

18 May 2020

What to consider before bidding in a trademark auction

With a recession looming over global markets, trademark auctions may become more prevalent. WTR speaks to experts on what due diligence these auctions require. Read more

15 May 2020

What the Virgin Media and O2 deal tells us about the branding struggles of telecom providers

The industry’s major players do a poor job of building consumer loyalty, and there is the constant risk of smaller, more flexible companies disrupting the market. Read more

15 May 2020

Court of Cassation reopens debate on recordation of well-known trademarks

In a decision that challenges longstanding precedents, the Court of Cassation has concluded that the Turkish Patent and Trademark Office has no authority to create and maintain a registry for the recordation of well-known trademarks. Read more

Trademark law

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29 Apr 2020

“A very significant development”: latest SkyKick ruling could have wide bad-faith implications

The English High Court has partially invalidated trademarks owned by Sky. Legal experts say the ruling could open up a new line of attack for defendants against brand owners. Read more

23 Apr 2020

Procedures and strategies for anti-counterfeiting: Turkey

Turkey is a party to a number of international conventions, including the Paris Convention, the Agreement on Trade-Related Aspects of Intellectual Property Rights and the Berne Convention. Read more

23 Apr 2020

Procedures and strategies for anti-counterfeiting: Italy

In the case of infringement, police investigations, undercover operations and seizure measures are available. Read more

23 Apr 2020

Procedures and strategies for anti-counterfeiting: Western Balkans

With a population of more than 20 million divided among seven jurisdictions, the Western Balkans has the potential to be fertile ground for the manufacture and distribution of counterfeit goods. Read more

Trending

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

2

“A veiled threat” – UK government releases draft EU free trade agreement with geographical indications omitted

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Trademark filing levels recover but long-term picture remains in doubt

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Digital receptions: how law firms are approaching networking for INTA’s virtual 2020 Annual Meeting

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A new normal: trademark community on life during and after the coronavirus pandemic – exclusive survey results

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Ekaterina Tsimberis
Partner
Montreal QC, Canada
Smart & Biggar
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