European Union

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.

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

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.

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16 Sep 2019

MONOPOLY case: a new light on bad faith?

The decision of the Board of Appeal of the EUIPO in invalidity proceedings involving Hasbro Inc’s mark MONOPOLY marked a new approach in the application of the concept of ‘bad faith’ under Article 59(1)(b) of the Trademark Regulation. Read more

13 Sep 2019

Defensive trademark registrations: the adidas and Mastercard cases

In two recent cases, defensive EU trademarks belonging to adidas and Mastercard have been cancelled on the grounds of non-use. Read more

10 Sep 2019

CJEU: single clinical trial not sufficient for genuine use

In Viridis Pharmaceutical Ltd v EUIPO, the Court of Justice of the European Union has confirmed that there was no genuine use of Viridis’ trademark BOSWELAN on a pharmaceutical product nor proper reasons for non-use. Read more

29 Aug 2019

McDonald’s MC mark partially revoked for lack of genuine use

Following an application made by Irish fast food chain Supermac’s, the EUIPO Cancellation Division has partially revoked the McDonald’s word mark MC on the grounds that the company failed to provide sufficient evidence to support genuine use of MC as a standalone mark. The decision is a stark reminder for owners to maintain full records of trademark use in case of a revocation application from competitors for non-use – no matter how well known the brand is. Read more

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Anti-counterfeiting

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23 Aug 2019

Connecting continents: exclusive interview with EUIPO head of IP Key Latin America 

IP Key Latin America seeks to bridge an IP knowledge gap between the European Union and the host of diverse countries in Latin America. WTR spoke to Pedro Duarte, head of IP Key Latin America, for insight into the project’s successes. 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

19 Jul 2019

European Union loses €60 billion each year in sales due to counterfeiting

The EUIPO’s 2019 Status Report on IPR Infringement has revealed that annual losses due to counterfeiting and piracy in the European Union are estimated at €60 billion, which is equivalent to 7.4% of all EU-wide sales. 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

Brand management

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2 Jul 2019

“Greatly beneficial” – IP provisions of EU-Vietnam free trade agreement praised by experts

The landmark EU-Vietnam Trade Agreement has been officially signed. Talking to WTR, IP practitioners claim that the agreement will lead to significant changes to the trademark, design and GI system in Vietnam. Read more

27 Jun 2019

Too simple? Lessons from adidas’ three stripes trademark battle

Last week the General Court of the European Union upheld the decision of the EUIPO to invalidate the registration for adidas’ three-stripe figurative mark. In this exclusive guest post, the takeaways for trademark owners are presented. Read more

19 Jun 2019

The Scotch Whisky Association faces Brexit and GI infringement with a stiff upper lip

Lindesay Low, deputy director – legal at the Scotch Whisky Association, reveals how the company has upheld enforcement efforts amid Brexit chaos and why it remains confident in the face of international infringement, proving itself the worthy winner of WTR’s Not-for-Profit Organisation Team of the Year. Read more

17 Jun 2019

How the Reckitt Benckiser trademark team took restructuring in its stride

Restructuring can cause a number of headaches for a company, but the WTR Household and Consumer Goods Team of the Year, Reckitt Benckiser, has proven that adaptability and effective communication are the secret to ensuring that enforcement efforts remain uncompromised during times of upheaval. Read more

Enforcement and litigation

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16 Sep 2019

MONOPOLY case: a new light on bad faith?

The decision of the Board of Appeal of the EUIPO in invalidity proceedings involving Hasbro Inc’s mark MONOPOLY marked a new approach in the application of the concept of ‘bad faith’ under Article 59(1)(b) of the Trademark Regulation. Read more

13 Sep 2019

Defensive trademark registrations: the adidas and Mastercard cases

In two recent cases, defensive EU trademarks belonging to adidas and Mastercard have been cancelled on the grounds of non-use. Read more

10 Sep 2019

CJEU: single clinical trial not sufficient for genuine use

In Viridis Pharmaceutical Ltd v EUIPO, the Court of Justice of the European Union has confirmed that there was no genuine use of Viridis’ trademark BOSWELAN on a pharmaceutical product nor proper reasons for non-use. Read more

15 Aug 2019

General Court: genuine use may be established if mark as used differs from mark as registered only in insignificant respects

The decision of the EU General Court in mobile.de v EUIPO highlights that a mark owner may, in the commercial exploitation of the sign, make variations which, without altering its distinctive character, enable it to be better adapted to the requirements of the goods or services concerned. Read more

Goverment/policy

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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

18 Jul 2019

EU offers increasingly interesting market for pharmaceutical trademarks

The European Union offers an increasingly interesting market for pharmaceutical companies, thanks to its growing elderly population, above average expenditure on drugs and robust use of branded drugs over generic equivalents. Pharmaceutical trademarks are a crucial element of this. Read more

8 Jul 2019

UK trademark attorney salaries continue to rise despite Brexit uncertainty

Research reveals that base salaries have risen across the board for UK IP roles. The news will be positively received by those toiling in the trademark trenches while bracing themselves for the possible negative economic impact of Brexit.  Read more

19 Jun 2019

The Scotch Whisky Association faces Brexit and GI infringement with a stiff upper lip

Lindesay Low, deputy director – legal at the Scotch Whisky Association, reveals how the company has upheld enforcement efforts amid Brexit chaos and why it remains confident in the face of international infringement, proving itself the worthy winner of WTR’s Not-for-Profit Organisation Team of the Year. Read more

Law firms

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14 Jun 2019

EUIPO enforcement portal, most cyber-attacked brands, and ACG anti-counterfeiting award winners: news digest

In our latest edition, we look at changes to Canadian registrations occurring next week, Unilever seeing a pay-off from purpose-led brands, brands being reminded to renew marks in Rwanda, and much more. Read more

5 Apr 2019

China data to TMview this year, Brazil moves closer to Madrid, and Beckham versus Inter Milan: news digest

In our latest round-up, we look at luxury brands focused on Chinese e-commerce platforms, IP Australia opening a public consultation on fees, Red Points receiving funding injection, and much more. Read more

21 Feb 2019

Why every trademark lawyer should spend time in-house: exclusive interview with Bacardi’s Anna Panka

While legal know-how is critical for law firm practitioners, an understanding of the corporate business environment should not be underestimated. That is the message conveyed by Anna Panka, senior counsel at Bacardi, in an exclusive interview with WTR. Read more

2 Oct 2018

“The EUIPO should lead on enforcement” – trademark community reacts to Archambeau appointment

National IP offices within the European Union, key trademark associations and leading filing law firms in the EU react to the appointment of Christian Archambeau as the new executive director of the EUIPO. Read more

IP offices

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15 Aug 2019

“A spectacular own goal”? EUIPO warns of applications with long lists of goods and services caused by its own tool

The EUIPO has warned about EUTMs with long lists of goods and services. A WTR investigation finds that the cause appears to be linked to the EUIPO’s own goods and services builder tool. Read more

1 Aug 2019

A design for life: why EU design regulation needs to be reformed

In an exclusive guest post, Claudio Balboni from Bugnion argues that the regulation on designs in the European Union needs to be reformed due to a so-called ‘regulatory conundrum’ that brand owners face. Read more

19 Jun 2019

Three stripes, you’re out! – adidas loses appeal as EU General Court rules trademark invalid

The General Court of the European Union has upheld the decision of the EUIPO to invalidate the trademark registration for adidas’ three-stripe branding. We analyse the decision and look at reaction. Read more

19 Jun 2019

Trademark application revenue up, expenditure stabilises: five takeaways from the EUIPO’s annual report

The EUIPO has released its latest annual report, detailing its progress across such areas as staff engagement, stakeholder relationships and data protection reforms. Here are our top five takeaways. Read more

Online

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23 May 2019

“Heroes of the European economy” – major new study reveals link between IP protection and SME success

A joint study between the European Patent Office and the EU Intellectual Property Office has evidenced a clear correlation between the success of small to medium-sized businesses and their utilisation of intellectual property.  Read more

19 May 2019

Brexit, China, surplus and SMEs: takeaways from Christian Archambeau’s first press briefing as EUIPO head

Christian Archambeau sat down with journalists earlier today in what was his first press briefing since he became executive director of the EUIPO. In a wide-ranging discussion, he revealed various plans that the office has in the works. Read more

15 May 2019

European Union adopts new ‘.eu’ Regulation

The European Union has adopted Regulation 2019/517, known as the ‘.eu’ Regulation, which seeks to future-proof the regulatory framework and to promote the digital single market. Read more

1 May 2019

Why active advertising services need active anti-counterfeiting measures

A recent judgment in a dispute between Facebook and Tommy Hilfiger could have a significant impact on the fight against fakes. Read more

Portfolio management

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13 Aug 2019

Blow for Red Bull as CJEU confirms invalidity of blue and silver colour marks

In Red Bull Gmbh v EUIPO, the Court of Justice of the European Union has dismissed an appeal against a General Court decision upholding a finding of invalidity in respect of Red Bull’s blue and silver colour marks. Read more

8 Aug 2019

General Court confirms lack of likelihood of confusion between MANDO and earlier MAN marks

The EU General Court has partially upheld a decision of the First Board of Appeal of the EUIPO finding that there was no likelihood of confusion between the word mark MANDO and earlier international registrations for the figurative mark MAN. Read more

31 Jul 2019

General Court confirms likelihood of confusion between H’UGO’S and HUGO’S BURGER BAR

The EU General Court has confirmed that there was a likelihood of confusion between the figurative mark HUGO’S BURGER BAR in Classes 29 and 30 and the earlier word mark H’UGO’S in Classes 29, 30 and 43. Read more

29 Jul 2019

DON LUCIANO v LUCIANO SANDRONE: General Court considers conceptual comparison of signs containing personal names

In Luciano Sandrone v EUIPO, the EU General Court has considered the conceptual comparison between signs containing a surname or first name and recognised that the case law is unsettled on this point. Read more

Trademark law

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7 Aug 2019

Return of the Supermac’s: Irish chain delivers another blow to McDonald’s 

The EUIPO has partially invalidated McDonald’s EU trademarks for the ‘Mc’ prefix. As with the recent BIG MAC decision, McDonald’s was deemed to have submitted insufficient evidence to claim use for the disputed marks. Read more

31 Jul 2019

Plucked wings: breaking down the CJEU’s invalidation of two Red Bull colour trademarks 

A protracted case came to a close this week when Red Bull’s appeal to the Court of Justice of the European Union was dismissed. One of the intervenor’s representatives told WTR that the decision should not have any direct impact on existing colour marks. 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

18 Jul 2019

“An enormous opportunity” – IP provisions of EU-Mercosur Agreement lauded

The European Union and the Mercosur bloc of countries have agreed a comprehensive trade agreement that includes significant IP provisions that rights holders should be aware of.  Read more