Europe

Deep dive into Apple counterfeit fight, Skripal poison pair trademark, and most valuable UK brands: news round-up

In our latest edition, we look at China and Singapore partnering up for an IP initiative, another trademark scam highlighted, a German court dealing a blow to ICANN, and much more.

Deep dive into Apple counterfeit fight, Skripal poison pair trademark, and most valuable UK brands: news round-up
21 Sep 2018

UDRP misuse warning, non-traditional tips, and the danger from subtle copies: insights from MARQUES 2018

This week’s MARQUES Annual Conference in Paris draws to a close today. We present some of the key insights from the event, including insight into the standoff around WHOIS data access, the one Brexit-related question you need to be asking, and more.

18 Sep 2018

Crazy or canny? Tesco trademark ‘misstep’ may actually be a conscious commercial decision

Supermarket chain Tesco has been the focus of media coverage due to the lack of registered trademark protection for its new discount store brand Jack's, a move described as “absolute madness”. However, the reality is a more nuanced.

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21 Sep 2018

Success for Apple as General Court finds certain degree of similarity between APO and APPLE marks

In a victory for Apple Inc, the EU General Court has annulled a decision of the Fourth Board of Appeal of the EUIPO in which the latter had found that the figurative mark APO was not similar to Apple’s earlier marks. Read more

20 Sep 2018

Bad news for tourism and souvenir industry as CJEU rules that castle name can be registered as trademark

In a ruling that sits uncomfortably with its earlier decision in Windsurfing Chiemsee, the Court of Justice of the European Union has rejected the notion that the name of a famous Bavarian castle could serve as a geographic indication for the relevant goods/services.  Read more

18 Sep 2018

Get the inside track on cost-effectively managing trademark portfolios

WTR is pleased to announce that Managing Trademark Assets Europe will be heading to London on 28 January 2019. The event will present cutting-edge strategies for the creation, protection and monetisation of strong brands. Read more

15 Sep 2018

Social media buy-and-sell groups to be targeted in anti-counterfeiting initiative backed by UK government

A new programme has been developed in the UK to create greater awareness amongst the administrators of 'buy-and-sell' social media groups about their legal responsibility to prevent the promotion and sale of counterfeit goods. Read more

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Anti-counterfeiting

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12 Sep 2018

Trademark procedures and strategies: France

Any natural person or legal entity can apply for a French trademark before the French Institut National de la Propriété Industrielle (INPI). The application can be filed by the owner itself or its representative. Read more

11 Sep 2018

More #MeToo trademark applications, USPTO scandalous marks fight, and FIFA thanks Rospatent for World Cup help: news round-up

In our latest round-up, we look at more trademark applications related to the #MeToo movement, the Swedish IP Office warning against fake election posters, a US court having its say on trademark bullying, and much more. Read more

6 Sep 2018

Burberry scraps anti-counterfeiting product destruction; will more brands follow suit?

Fashion giant Burberry announced today that it will stop the practice of “destroying unsaleable products” with immediate effect. Could the move lead to other brands in the luxury sector to cease the practice of product destruction? Read more

17 Jul 2018

Court of Appeal upholds criminal sentence for import of counterfeit t-shirts bearing registered trademarks

The Court of Appeal of Zaragoza in Spain has upheld a judgment of the Trial Court in which the latter had sentenced the defendants for importing thousands of counterfeit t-shirts from China. Read more

Brand management

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10 Sep 2018

Trademark procedures and strategies: Serbia

Foreign undertakings not based in Serbia must be represented by a local attorney or registered IP agent. Power of attorney can be filed belatedly and need not be notarised or legalised. Read more

7 Sep 2018

Trademark procedures and strategies: Romania

The Romanian trademark system is based on the first-to-file principle and registration is possible without the need to show genuine use. However, if an application is refused registration for lack of distinctive character, the refusal can be overcome if the mark has acquired distinctive character through prior use. Read more

29 Aug 2018

Keeping it fresh: Italy’s new approach to distinctive signs

Although branding companies and professionals have embraced the concept of fluid trademarks, it remains a highly complex field requiring close cooperation between IP attorneys and brand owners. Read more

29 Aug 2018

How to avoid pitfalls in Turkey when it comes to dynamic marks

Fluid trademarks are fun and innovative marketing tools for brand owners, but as there is no express protection for such marks in Turkey, they can be legally unstable and vulnerable. Read more

Enforcement and litigation

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21 Sep 2018

Success for Apple as General Court finds certain degree of similarity between APO and APPLE marks

In a victory for Apple Inc, the EU General Court has annulled a decision of the Fourth Board of Appeal of the EUIPO in which the latter had found that the figurative mark APO was not similar to Apple’s earlier marks. Read more

20 Sep 2018

Bad news for tourism and souvenir industry as CJEU rules that castle name can be registered as trademark

In a ruling that sits uncomfortably with its earlier decision in Windsurfing Chiemsee, the Court of Justice of the European Union has rejected the notion that the name of a famous Bavarian castle could serve as a geographic indication for the relevant goods/services.  Read more

13 Sep 2018

Massimo Osti v Global Design: should a claim be issued in the IPEC or the High Court?  

The decision in Massimo Osti v Global Design shows that the choice of bringing a case in the Intellectual Property Enterprise Court or the High Court of England and Wales is not always within the control of the claimant. Read more

12 Sep 2018

Trademark procedures and strategies: Italy

Italy has a first-to-file system, therefore unregistered trademarks enjoy a lesser degree of protection than registered trademarks. Only in exceptional circumstances can an unregistered trademark prevail over a later registered trademark. Read more

Goverment/policy

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10 Sep 2018

Trademark procedures and strategies: United Kingdom

In the United Kingdom, any legal or natural person can apply for registered trademark protection, provided they declare that the mark is being used by them, or with their consent, or there is a genuine intention to use the mark for the goods and services specified. Read more

10 Sep 2018

Trademark procedures and strategies: Ukraine

The Trademark Act does not protect unregistered trademarks as such. However, in certain cases, the owner of an unregistered mark that is used in Ukraine can protect its rights on the grounds of unfair competition laws.  Read more

10 Sep 2018

Trademark procedures and strategies: Switzerland

Any natural or legal person can apply for trademark registration in Switzerland (restrictions apply to geographical marks). Foreign applicants must indicate a service address for use in Switzerland.  Read more

10 Sep 2018

Where did it all go wrong in the WTO plain-packaging dispute?

The World Trade Organisation’s panel report in the cases brought against Australia’s plain-packaging regime is difficult reading – and some of its key arguments are without merit. Read more

Law firms

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7 Sep 2018

The fall of the own-name defence

The ability to raise the own-name defence in Europe is about to come to an end. This article examines the consequences of recent own-name legislative changes for businesses in Europe. Read more

24 Aug 2018

A-Z of EU trademark court practice and performance: Netherlands to Slovenia

In the fourth of our five-part series, trademark counsel from law firms across Europe provide an overview of the performance of their countries’ EU trademark courts over the past two years. Read more

7 Aug 2018

Audi launches anti-counterfeiting campaign, YouTube brand safety fiasco and TMview expands: news round-up

In our latest round-up, we look at the expansion of the EUIPO’s TMview search platform, Scotch Whisky attaining GI protection in South Africa, Chinese trademarks continuing rapid growth rate, and much more. Read more

29 Jun 2018

Positive ‘Swissness’ results, IACC and EURid partner up, and the first family of counterfeit hunting: news round-up

We look at a new law in China that could boost the fight against fakes, a comedian seeking over $100 million in infringement damages, a leaked email revealing “efforts to trademark Clean Meat”, and much more. Read more

IP offices

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12 Sep 2018

Trademark procedures and strategies: Benelux

The Benelux Convention does not provide for protection of unregistered trademarks, the only exception being the protection of well-known marks as prescribed by the Paris Convention. Read more

12 Sep 2018

Trademark procedures and strategies: Poland

Unregistered marks benefit from the same protection as registered ones if they are commonly known within Poland.  Read more

10 Sep 2018

Trademark procedures and strategies: Sweden

Any natural person or legal entity can apply for a mark and representatives do not require a power of attorney before filing. Anything that can be graphically represented is eligible for trademark protection. Read more

10 Sep 2018

Trademark procedures and strategies: Spain

At an international level, the Trademark Act has adapted Spanish law to the general legal framework established within the international community.  Read more

Online

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20 Jul 2018

“E-commerce platforms make huge efforts to protect brands’ rights”: exclusive interview with Groupon’s Pablo Rodriguez

Pablo Amat Rodriguez talks to us about his IP work at e-commerce brand Groupon. He reveals how he meets the distinctive IP challenges the trademark department faces, working with law firms, and much more. Read more

9 Jul 2018

Data authorities respond to ICANN call for help; WHOIS future left up in the air

The European Data Protection Board has responded to ICANN’s call for guidance to enable the development a GDPR-compliant WHOIS model. The document raises the prospect that a more conservative approach to WHOIS data publication will result. Read more

21 Jun 2018

Bitcoin, CNN and Elon Musk under attack: how scammers are stepping up their game

​​​​​​​An investigation from World Trademark Review has explored the evolving tactics of misleading and often malicious websites that pose as articles from well-known news outlets, with common trends including the use of cryptocurrency and Elon Musk to lure in users. Read more

18 Jun 2018

UK Supreme Court Cartier judgment: who pays for website blocking orders?

In a blow for rights holders, in Cartier International AG v British Telecommunications Plc the UK Supreme Court has decided that internet service providers should not bear the implementation costs for website blocking orders. Read more

Portfolio management

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12 Sep 2018

Trademark registration of works of art in public domain – reasonable grounds for rejection?

It is important for economic well-being that economic operators have the freedom to operate with as few restrictions as possible, including the freedom to choose an identifier or trademark for their business.  Read more

11 Sep 2018

AUTOKEY marks found to have acquired secondary meaning as badge of origin

The Irish controller for patents, designs and trademarks has found that, although two AUTOKEY marks were liable to be refused under two different sections of the Trademarks Act, the marks had acquired distinctiveness through use. Read more

10 Sep 2018

Supreme Court ends long-running debate: grace period from Association Agreement directly applicable in Ukraine

Ukraine’s Supreme Court has upheld decisions of the lower courts finding that the EU-Ukraine Association Agreement - which provides for a five-year non-use grace period, as opposed to three years under the national law - applied with direct effect. Read more

10 Sep 2018

Trademark procedures and strategies: Serbia

Foreign undertakings not based in Serbia must be represented by a local attorney or registered IP agent. Power of attorney can be filed belatedly and need not be notarised or legalised. Read more

Trademark law

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12 Sep 2018

The future of trademarks

Global brand owners face increasing challenges in protecting, managing and enforcing their IP rights. These include challenges arising from new technologies, new business models and new markets. Read more

12 Sep 2018

Trademark procedures and strategies: Italy

Italy has a first-to-file system, therefore unregistered trademarks enjoy a lesser degree of protection than registered trademarks. Only in exceptional circumstances can an unregistered trademark prevail over a later registered trademark. Read more

12 Sep 2018

Trademark procedures and strategies: Greece

In order to obtain protection, an unregistered sign must have distinctive character and must have been used in commerce. No specific statutory conditions outline the extent and type of use that will satisfy these criteria. Read more

12 Sep 2018

Trademark procedures and strategies: Germany

Commercial designations are protected against newer identical or confusingly similar trade designations and trademarks once they are first used in Germany, but details of this protection can be complex. Read more

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Ben Natter
Partner
New York NY, United States
Haug Partners