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European Union

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.

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

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.

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18 Nov 2019

General Court confirms that figurative mark is descriptive

In United States Seafoods LLC v EUIPO, the EU General Court has confirmed that the mark UNITED STATES SEAFOODS, with a design resembling the US flag cropped into the shape of a territory, was descriptive. Read more

14 Nov 2019

General Court provides guidance on proof of enhanced distinctiveness

In EI Papadopoulos SA v EUIPO, the EU General Court has provided guidance regarding the assessment of evidence intended to show the enhanced distinctiveness of a mark. Read more

13 Nov 2019

General Court: Board of Appeal incorrectly interpreted specification of earlier trademarks

The EU General Court has held that, when interpreting the specification of an earlier mark, it is the interpretation which, among a number of possible interpretations of EU legal instruments, is the one which does not lead to an absurd result that must be preferred. Read more

11 Nov 2019

CJEU refuses to hear appeal in trademark case under new rules

In Wirecard Technologies Gmbh v EUIPO, the Court of Justice of the European Union has decided for the first time that an appeal in a trademark case was inadmissible under new rules that came into force in May 2019. Read more

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Anti-counterfeiting

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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

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

Brand management

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24 Oct 2019

Legal uncertainty warning after court confirms cancellation of Rubik’s Cube EU trademark

The General Court has today confirmed the cancellation of the EU trademark consisting of the shape of the Rubik’s Cube, finding that the essential characteristics of the shape are necessary to obtain a technical result; therefore it could not be registered. Read more

2 Oct 2019

“A frankly pointless step” – why Banksy pop-up shop could hinder trademark case

Anonymous street artist Banksy has opened a pop-up shop in London in response to an ongoing trademark dispute with a card manufacturer. The attorney representing the card company reacts to the opening. Read more

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

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

Enforcement and litigation

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18 Nov 2019

General Court confirms that figurative mark is descriptive

In United States Seafoods LLC v EUIPO, the EU General Court has confirmed that the mark UNITED STATES SEAFOODS, with a design resembling the US flag cropped into the shape of a territory, was descriptive. Read more

14 Nov 2019

General Court provides guidance on proof of enhanced distinctiveness

In EI Papadopoulos SA v EUIPO, the EU General Court has provided guidance regarding the assessment of evidence intended to show the enhanced distinctiveness of a mark. Read more

13 Nov 2019

General Court: Board of Appeal incorrectly interpreted specification of earlier trademarks

The EU General Court has held that, when interpreting the specification of an earlier mark, it is the interpretation which, among a number of possible interpretations of EU legal instruments, is the one which does not lead to an absurd result that must be preferred. Read more

11 Nov 2019

CJEU refuses to hear appeal in trademark case under new rules

In Wirecard Technologies Gmbh v EUIPO, the Court of Justice of the European Union has decided for the first time that an appeal in a trademark case was inadmissible under new rules that came into force in May 2019. 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

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

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

Law firms

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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

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

IP offices

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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

20 Sep 2019

Brexit fraud, an uncertain future for GIs and law firm technology – takeaways from MARQUES 2019

As hundreds of trademark practitioners descend on Dublin this week to attend the 2019 MARQUES Annual Conference, we provide key learnings from one of the biggest trademark events of the year. Read more

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

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

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

Portfolio management

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7 Nov 2019

General Court confirms likelihood of confusion between figurative mark NUME and word mark NUMEDERM

The EU General Court has upheld a decision of the Fifth Board of Appeal of the EUIPO finding that there was a likelihood of confusion between the figurative mark NUME and the earlier word mark NUMEDERM for certain goods in Classes 5, 29 and 30. Read more

5 Nov 2019

General Court attempts to solve Rubik’s Cube puzzle

In Rubik’s Brand Ltd v EUIPO, the EU General Court has confirmed the cancellation of an EU trademark consisting of the shape of the well-known Rubik’s Cube puzzle in the latest decision in the long-running battle between Rubik’s Brand and Simba Toys. Read more

1 Nov 2019

Never underestimate the importance of DUNGEONS in Dungeons & Dragons

In Kalypso Media Group GmbH v EUIPO, the EU General Court has confirmed that there was a likelihood of confusion between the mark DUNGEONS and the earlier mark DUNGEONS & DRAGONS for games and computer games. Read more

30 Oct 2019

McDonald's triumphant in MC DREAMS opposition

In McDreams Hotel GmbH v EUIPO, American fast food giant McDonald's has successfully enforced its rights against a EU trademark application incorporating the prefix ‘Mc’ on the basis of its extensive reputation.  Read more

Trademark law

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1 Oct 2019

Colour marks: still a grey area?

Colour marks remain difficult to obtain, but brand owners can take certain steps to enhance their chances of success. Read more

1 Oct 2019

EU design strategies: maximising the chances of enforcement success

Registered Community designs have been enforced with varying success. However, several steps are available to maximise the scope of the protected design, making it easier to combat infringers. Read more

30 Sep 2019

ECJ case law displays nuanced understanding of comparative advertising

A case from the European Court of Justice offers invaluable guidance for what is acceptable in comparative advertising, especially when it comes to comparing the prices of goods sold in different types and sizes of outlet. 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

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

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CJEU refuses to hear appeal in trademark case under new rules

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General Court provides guidance on proof of enhanced distinctiveness

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Groundbreaking research reveals significant risks in AI analysis of trademark registers

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General Court: Board of Appeal incorrectly interpreted specification of earlier trademarks

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General Court confirms that figurative mark is descriptive

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General Court provides guidance on proof of enhanced distinctiveness

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General Court: Board of Appeal incorrectly interpreted specification of earlier trademarks

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CJEU refuses to hear appeal in trademark case under new rules

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Vladimir Marenović
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Belgrade, Serbia
Zivko Mijatovic & Partners
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