European Union

JPO launches trademark fist, IP firm coronavirus response, and EUIPO updates Brexit information: news digest

In our latest edition, we look at Pablo Escobar’s IP being put up for sale, the Singapore registry visiting Turkey, Malta joining DesignClass, the Tajikistan IPO giving its annual trademark update, and much more.

JPO launches trademark fist, IP firm coronavirus response, and EUIPO updates Brexit information: news digest
28 Jan 2020

How mental health aware initiatives are changing the legal workplace

As firms become wise to mental ill-health’s drastic toll on the legal workplace, what are firms doing to tackle the problem head on? WTR looks at EIP's mental health first aider scheme and we catch up with Dentons' chief mindfulness officer.

23 Jan 2020

A third of companies admit uncertainty over post-Brexit trademark strategy

A new study has revealed that a third of UK and European businesses remain uncertain of what their trademark registration strategy will be after the UK leaves the European Union.

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27 Jan 2020

Blow for JTI as application for figurative IJTI mark is upheld as valid

In Japan Tobacco Inc v EUIPO, the EU General Court has confirmed that there was no likelihood of confusion between IJ Tobacco Industry’s figurative mark IJTI and Japan Tobacco Inc’s earlier figurative mark JTI. Read more

23 Jan 2020

Blow for Nestlé as General Court finds that it failed to establish reputation of its ONE mark

In Amigüitos pets & life v EUIPO, the General Court has scored one for the little guy against big hitter Nestlé. Read more

21 Jan 2020

“UK will become paradise for free riders”: CJEU referral highlights potential Brexit IP schism

Four questions have been referred to the CJEU which could lead to a landmark judgement on a trademark owners’ rights to stop resales. The decision may further enlarge the gulf between the UK and the EU's position on exhaustion post-Brexit. Read more

21 Jan 2020

Sony v EUIPO: when “annulment” really means “annulment”

The EU General Court has annulled a decision of the Fourth Board of Appeal of the EUIPO in revocation proceedings involving Sony’s mark VITA, as the board had failed to fulfil its obligation to hand down a fresh decision on all the relevant issues. Read more

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Anti-counterfeiting

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10 Jan 2020

China is top threat and Saudi Arabia added to EC’s third-country priority list

The European Commission has published its biennial report on protection and enforcement of IP rights in third countries, with some new additions to the priority list as well as an update to the countries which require further monitoring. Read more

17 Dec 2019

Scotch Whisky GI protection in Cambodia, Cuba joins TMview, and Frozen 2 lawsuit: news digest 

In our latest round-up, we look at the Chinese Supreme Court ordering Muji to pay $89,000, US Customs cracking down on fake handbags, the EUIPO inviting comments on its trademark evidence project, and much more. Read more

2 Dec 2019

Research reveals impact of counterfeits on UK economy amid call for increased collaboration

An OECD study has revealed the growing problem of counterfeiting in the UK.  One OECD economist told WTR that, in light of the findings, it is important for rights holders and customs to work more closely together.  Read more

22 Nov 2019

INTA award winners, Brexit Party cease-and-desist, and Chile IPO deadline extensions: news digest

In our latest edition, we look at the EUIPO approving the Strategic Plan 2025, Nominet releasing its Criminality Report, WIPO kicking off a new case law publication series, and much more. Read more

Brand management

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24 Dec 2019

How to prove use without invoices – lessons from BIG MAC decision

Any evidence of genuine use is likely to include invoices for products bearing the relevant mark, but what if there are no invoices? The recent BIG MAC case provides useful guidance on which alternative types of evidence are viewed most favourably by the courts and IP offices, and how best to present these. Read more

17 Dec 2019

New report finds that trademark licensing brings significant revenue to SMEs

A new EU study on the relationship between small and medium-sized enterprises (SMEs) and trademark licences finds the annual estimated revenue for all SMEs that license their EU trademarks is €1.9 billion. Read more

10 Dec 2019

Frozen 2 versus Christian Louboutin: could Anna’s red-soled shoes lead to a trademark dispute?

In Disney's Frozen 2, main character Anna is seen wearing red-bottomed boots, with some claiming a similarity to the iconic footwear of fashion brand Christian Louboutin. We speak with IP experts on the issues potentially at play. Read more

9 Dec 2019

Luxury brands and enhanced IP protection: lessons from Claridge’s and Prada disputes

Experts from Powell Gilbert consider two recent cases involving owners of luxury brands that serve to clarify the scope of protection of premium brands. Read more

Enforcement and litigation

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27 Jan 2020

Blow for JTI as application for figurative IJTI mark is upheld as valid

In Japan Tobacco Inc v EUIPO, the EU General Court has confirmed that there was no likelihood of confusion between IJ Tobacco Industry’s figurative mark IJTI and Japan Tobacco Inc’s earlier figurative mark JTI. Read more

23 Jan 2020

Blow for Nestlé as General Court finds that it failed to establish reputation of its ONE mark

In Amigüitos pets & life v EUIPO, the General Court has scored one for the little guy against big hitter Nestlé. Read more

21 Jan 2020

Sony v EUIPO: when “annulment” really means “annulment”

The EU General Court has annulled a decision of the Fourth Board of Appeal of the EUIPO in revocation proceedings involving Sony’s mark VITA, as the board had failed to fulfil its obligation to hand down a fresh decision on all the relevant issues. Read more

20 Jan 2020

Rocketeer prepares for take-off: exclusive first look at Simmons & Simmons’ AI-driven conflict prediction tool

Simmons & Simmons has developed an innovative AI-driven tool which predicts the outcome of EU trademark conflicts to 93% accuracy. WTR sat down with its project lead to discuss how AI could change trademark practice. Read more

Goverment/policy

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10 Jan 2020

CANNABIS decision: coffee and (space) cakes at the General Court

In Conte v EUIPO, the EU General Court has confirmed that the mark CANNABIS STORE AMSTERDAM was contrary to public policy or to accepted principles of morality under Article 7(1)(f) of EU Regulation 2017/1001. Read more

8 Nov 2019

Myanmar trademark office opening, Backcountry.com boycott and Facebook rebrand: news digest

In our latest round-up, we look at the destination for the DesignEuropa Awards 2020, Kenya and the UK working together to tackle fakes, Monzo fails in ‘hot coral’ trademark attempt, and much more. Read more

28 Oct 2019

Havarti cheese backlash highlights controversial and emotive nature of geographical indications

Last week, the European Commission entered the name ‘Havarti’ onto the register of protected geographical indications. The ensuing backlash serves as a microcosm of the emotive political discourse that surrounds this form of IP protection. Read more

25 Sep 2019

Trademark-intensive industry fundamental to EU economy, EUIPO-EPO joint study reveals

The European Union Intellectual Property Office and European Patent Office have launched the third edition of a study that examines the economic impact of IP rights across the EU. Here are the top takeaways. Read more

Law firms

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6 Sep 2019

KFC dragged into UK politics, identifying a trademark bully, and EUIPO on long applications: news digest

In our latest round-up, we look at the CEO of WeWork returning a “trademark payment” to the company, Ariana Grande suing Forever 21, debate over dropping word marks, and much more. Read more

23 Aug 2019

World’s largest trademark application, IPOS launches app, and Notorious Markets List comments open: news digest

In our latest round-up, we look at the art of avoiding brand hate, Hasbro acquiring Peppa Pig owner, the INTA holding its first roundtable event in Israel, and much more. Read more

9 Aug 2019

Five counterfeit hotspots that you must be aware of in Cyprus

In the latest edition of our new series into fake goods around the world, we head to the beautiful Mediterranean island of Cyprus and focus on the counterfeit hotspots that rights holders should have on their enforcement radars. Read more

29 Jul 2019

The top filers and a vision for the future: inside EUIPO operations

Less than a year into Christian Archambeau’s tenure as executive director, the EUIPO is laying the groundwork for future expansion. World Trademark Review’s annual focus on the office assesses current operations, reveals the most proactive filers and explores how the agency is taking a global view of trademarks. Read more

IP offices

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13 Dec 2019

“Europe is not yet prepared” – reaction as Cannabis mark ruled unregistrable by EU court 

The General Court of the European Union has ruled against a trademark due to its implied links to illegal narcotics. Industry experts give their reaction. Read more

3 Dec 2019

A bold new era for TMview; improving the world’s largest free trademark search engine

In an exclusive guest post, the team behind the EUIPO’s flagship platform share tips on making the most of TMview’s new features – and call for practitioners to give their feedback to ensure that it meets the needs of the trademark community. Read more

28 Nov 2019

EU accession to Geneva Act and leaked trade papers put Britain’s post-Brexit GI position back under the spotlight

Upon leaving the EU, the UK will no longer be part of the Lisbon Agreement. Documents leaked yesterday point to a potential departure from the EU's strategy on GIs in order to appease a US trade deal. Read more

29 Oct 2019

Groundbreaking research reveals significant risks in AI analysis of trademark registers

A new study looking at how AI is used by IP offices warns that “the seductive appeal of the all-seeing algorithm should be resisted” due to current limitations. Read more

Online

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19 Sep 2019

CJEU clarifies jurisdiction in online infringement cases: the consumers' country is the place of infringement

In a victory for trademark owners, the Court of Justice of the European Union has clarified the issue of jurisdiction in cases involving the online infringement of EU trademarks. Read more

6 Sep 2019

“Rational and forward-thinking” – CJEU rules cases of online trademark infringement can be held in consumer’s jurisdiction

Reaction to the Court of Justice of the European Union ruling in favour of plaintiffs suing online infringers in the member state they acquired the product.  Read more

1 Aug 2019

Practical implications of the new EU Copyright Directive

The new EU Copyright in the Digital Single Market Directive has significant potential for content creators and publishers – but the nuances of the new rules must be properly understood. Read more

28 Jun 2019

Cannabis counterfeits; the campus consequence of Brunetti; and Anheuser-Busch eyes esports market: news digest 

In our latest news round-up, we look at how Alibaba is seeking increased brand engagement, Anheuser-Busch making a play for the esports industry, a USPTO call for comments, Albania’s accession to the Geneva Act and much more. Read more

Portfolio management

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17 Jan 2020

Is RING distinctive for doorbells and motion sensors?

In a blow to Amazon Technologies Inc, the EU General Court has confirmed that the figurative mark RING was descriptive in relation to doorbells, motion sensors and monitoring equipment. Read more

15 Jan 2020

General Court confirms lack of likelihood of confusion between CRYSTAL and CRISTAL

In Super bock group v EUIPO, the EU General Court has confirmed that there was no likelihood of confusion between the mark CRYSTAL for non-alcoholic beverages and foodstuffs in Class 30 and the earlier Portuguese mark CRISTAL for beer in Class 32. Read more

8 Jan 2020

CJEU finds genuine use of EU collective mark for packaging waste system

In Der Grüne Punkt – Duales System Deutschland GmbH v EUIPO, the Court of Justice of the European Union has given guidance on the genuine use of collective marks, setting aside the judgment of the General Court.   Read more

6 Jan 2020

CJEU on geographical designations of origin: German ‘Balsamico’ is permitted

The Court of Justice of the European Union has ruled that the protection of the name 'Aceto Balsamico di Modena' does not extend to the use of the non-geographical terms 'aceto' and 'balsamico'. Read more

Trademark law

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20 Jan 2020

Rocketeer prepares for take-off: exclusive first look at Simmons & Simmons’ AI-driven conflict prediction tool

Simmons & Simmons has developed an innovative AI-driven tool which predicts the outcome of EU trademark conflicts to 93% accuracy. WTR sat down with its project lead to discuss how AI could change trademark practice. Read more

6 Jan 2020

Current EU non-agricultural protections not equipped for many products, argues new academic paper

The existing AO system of protection is too restrictive to effectively act as a sui generis GI regime for many non-agricultural products, contends new research - which calls for the scaling up of a EU-wide Protected Geographical Indications scheme. Read more

2 Jan 2020

#FairUse? Third-party trademarks in social media hashtags

European and US case law suggests that there are very few situations in which use of a third party’s trademark in a hashtag is permissible. As a result, those looking to advertise on social media need to be aware of the strict rules that apply. Read more

2 Jan 2020

Use it or lost it: no one is too big to lose a trademarks for non-use

There is an almost infinite amount of evidence that could be put forward to support a claim that a trademark has been used, but it has to be up to scratch. Failure to effectively prove use can have dire consequences – as the recent BIG MAC decision illustrates. Read more

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