European Union

Sky v SkyKick: permission to appeal keeps long-running trademark battle raging on

With the ramifications for partial bad-faith filings still on the table, SkyKick representatives say they are “hopeful” they will be victorious in the end.

<em>Sky v SkyKick</em>: permission to appeal keeps long-running trademark battle raging on
Why pan-European dynamic injunctions could be vital in trademark fights
2 Jul 2020

Why pan-European dynamic injunctions could be vital in trademark fights

An order issued by Italy’s Court of Bologna shines the spotlight on this invaluable IP weapon and why it should be a part of every rights holder’s arsenal

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

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2 Jul 2020

General Court upholds Louis Vuitton’s appeal in checkerboard pattern case

This case, which involved a beige-and-blue chequerboard pattern trademark owned by French fashion house Louis Vuitton Malletier, highlights that those hoping to obtain EUTM protection by showing acquired distinctiveness will have their work cut. Read more

25 Jun 2020

CJEU: "incorrect in law" to assess similarity of signs in light of distinctive character

This decision of the Court of Justice of the European Union shows that the reputation and distinctive character of the mark on which an opposition is based are irrelevant to the assessment of similarity. Read more

24 Jun 2020

General Court provides guidance on assessment of evidence of genuine use

The EU General Court has provided important guidance on the evaluation of the proof of genuine use of a mark in opposition proceedings involving clothing company Diesel and sporting equipment and apparel retailer Sprinter. Read more

22 Jun 2020

General Court slices through hunting company’s appeal in TASER case

The EU General Court has confirmed that there was a likelihood of confusion between the figurative mark TASER for “side arms; penknives” in Class 8 and earlier TASER marks for “non-lethal electronic weapons” in Class 13. Read more

Anti-Counterfeiting

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10 Jun 2020

“The idea of IP crime as victimless is misguided”: report evidences serious crimes link

A new research report has investigated the link between IP and other forms of serious crime. Released to coincide with World Anti-counterfeiting Day, the study provides useful intelligence for policymakers and rights holders alike. Read more

3 Jun 2020

Europol seizes double illegal pesticides in annual sting: how brand organisations help make the difference

Europol has conducted its most successful exercise against counterfeit pesticides. WTR spoke with the ECPA to learn about the role that its member companies played in the operation. 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

4 May 2020

Brands must take extra caution against counterfeits during covid-19 pandemic

A report from EUROPOL provides an overview of how criminals are adapting to profit from the covid-19 pandemic. This update highlights how brand owners should adjust their enforcement strategies in light of the current situation. Read more

Brand management

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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

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

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

7 May 2020

MARQUES cancels 2020 Annual Conference

MARQUES has announced the cancellation of its 34th Annual Conference, which was due to be held in Stockholm, Sweden, in late September. Read more

Enforcement and Litigation

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18 Jun 2020

MasterCard loses round in logo cases before General Court

The General Court has found against MasterCard International Inc and annulled 12 decisions of the Second Board of Appeal of the EUIPO regarding oppositions based on the MasterCard logos. Read more

15 Jun 2020

XOXO mark fails to distinguish, says General Court

The EU General Court has confirmed that the mark XOXO - meaning ‘hugs and kisses’ - was devoid of distinctive character for goods which are typically offered as gifts. Read more

11 Jun 2020

Daisies really are common, according to the General Court

The EU General Court has annulled a decision of the EUIPO finding that two figurative marks consisting of a word element in Cyrillic characters and a daisy pattern, both covering “candies” in Class 30, were dissimilar. Read more

4 Jun 2020

Lidl partially successful on appeal in GREEN CYCLES case

In Lidl Stiftung & Co KG v EUIPO, the General Court has annulled the decision of the Fifth Board of Appeal of the EUIPO insofar as it found genuine use of the figurative mark GREEN CYCLES for goods in Class 20. Read more

Government/Policy

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8 Jun 2020

“Reprehensible” – GEORGE FLOYD and I CAN’T BREATHE trademark applications filed

WTR has identified trademark applications in the European Union and United Kingdom for GEORGE FLOYD, while numerous applications for I CAN’T BREATHE have been filed at the USPTO. Read more

3 Jun 2020

Study calls for shake-up of geographical indications to forge path towards universal trademark system

In conversation with WTR, the academic behind the research says a shake-up of indications of geographical origin could be the first step towards the “high ideal” of a universal trademark system. Read more

1 Jun 2020

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. Read more

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

Law Firms

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19 Jun 2020

Four key areas of investment for effective portfolio management

Marks & Clerk reveals the essential systems behind managing a huge international trademark portfolio. 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

7 Apr 2020

Harry and Meghan ARCHEWELL trademark update; EUIPO malicious invoice; THUNDERPUSSY registered – news digest

In our latest edition, we look at how trademark applications have fallen sharply in the US, Supermac’s dispute victory, IACC and Amazon expanding their anti-counterfeiting programme, and much more. Read more

3 Apr 2020

Spike in coronavirus knock-offs; Tiger King trademark fiasco; new TMview and DesignView – news digest

In our latest edition, we look at how counterfeit vaping devices are resurfacing as a major issue, the first well-known trademark being registered in Tajikistan, a new CEO being unveiled at UpCounsel, and much more. Read more

IP Offices

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18 Jun 2020

How the EUIPO is supporting SMEs amid an economic crisis

EUIPO deputy executive director Andrea Di Carlo reveals the steps that the office is taking to help vulnerable small businesses during the covid-19 pandemic. Read more

8 Jun 2020

Maintaining operations during a pandemic: EUIPO executive director on office’s covid-19 response

As EUIPO staff start to return to its Alicante HQ, executive director Christian Archambeau expands on how the office is handling a “tsunami” of trademarks and the ways in which remote working could give rise to new working practices. Read more

8 Jun 2020

EUIPO by the numbers: six key takeaways from the office’s latest Annual Report

The EUIPO has published its 2019 Annual Report. We present six top takeaways, exploring demand levels, the filings leader board and the gender gap at management level. Read more

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

Online

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20 Apr 2020

Coty v Amazon: warehouse provider and e-commerce platform liability in the EU

Coty v Amazon is the latest reference to the Court of Justice of the European Union for a preliminary ruling concerning the potential liability of e-commerce platforms. Read more

2 Apr 2020

Amazon not liable for storage of counterfeit goods, CJEU rules

The CJEU has ruled that Amazon is not legally liable for the storage of counterfeit goods. While the decision could be seen as a blow to the fight against fake goods, Amazon responded by pledging to ‘drive counterfeits to zero’. Read more

18 Feb 2020

Holden brand retired; EUIPO coronavirus extension; Japan GI cancellation – news digest

In our latest round-up, we look at Amazon car seat criticism leading to calls for legal reform, New Zealand being added to the TMview roster, US and China battling over the WIPO director general position, and much more. Read more

29 Jan 2020

Sky v SkyKick: “sigh of relief” or “sting in the tail”? Legal experts react to CJEU’s long-awaited decision

The Court of Justice of the European Union has handed down its long-awaited decision in Sky v Skykick. WTR speaks with multiple industry experts to get their take on this important decision. Read more

Portfolio Management

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2 Jun 2020

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

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

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

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

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

6 Apr 2020

Navigating geographical indications in the European Union

While European IP practice has begun to actively recognise and protect geographical indications, they are still treated with trepidation in the IP world. Read more

3 Apr 2020

Sky v SkyKick: was the CJEU swayed by Sky’s well-known brand?

The long-awaited Sky v Skykick decision brings new clarity to how well-known trademarks are treated in the European Union, although it also raises the question of what impact a strong brand might have on a court’s deliberations. Read more

26 Mar 2020

Get the inside track on bad faith in trademark law in the wake of Skykick

Next week, in a free webinar, the key principles that the CJEU set out in the long-awaited Sky v Skykick decision will be scrutinised. Read more

Find an expert

Katrina V Doble
Junior Partner
Metro Manila, Philippines
Villaraza & Angangco