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Amazon launches IP Accelerator in Europe as commission reiterates plan to clarify platform obligations

The European Commission has published an IP action plan, signalling its intention to review EU legislation on design protection, strengthen the protection of GIs and oblige platforms to act on illegal content and goods.

24 Nov 2020

Michael Gleissner: massive scope of trademark and domain portfolio revealed in exclusive data

A major new investigation from WTR has identified over 6,800 trademarks and 6,900 domain names that appear to be related to multi-millionaire and serial trademark filer Michael Gleissner.

24 Nov 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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26 Nov 2020

LOTTO v LOTTOLAND: General Court considers conditions for application of Article 8(5)

The General Court has confirmed that, notwithstanding the high reputation of the LOTTO marks and the above-average degree of similarity between LOTTO and LOTTOLAND, the existence of a link between the marks could be ruled out. Read more

24 Nov 2020

CJEU gives first ruling on Article 8(3) of Regulation 2017/1001

This decision of the Court of Justice of the European Union should provide some comfort to trademark owners as to the extent of protection of their marks when faced with misuse and unconsented EUTM applications by an agent/representative. Read more

18 Nov 2020

TARGET VENTURES case: Board of Appeal erred in finding that application was not filed in bad faith

In a decision that provides a useful review of the criteria for assessing whether an application has been filed in bad faith, the General Court has annulled a decision of the EUIPO rejecting an application for a declaration of invalidity of the mark TARGET VENTURES. Read more

16 Nov 2020

“Should we conclude that trademarks are for losers?”: takeaways from the Banksy case

In this guest analysis, Bristows’ Simon Clark and Lucie Fortune take a closer look at a recent case involving artist Banksy and consider the takeaways for artists looking to register representations of their artworks as EU figurative marks. Read more

Anti-Counterfeiting

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13 Nov 2020

EUIPO ditches fax; Century 21 brand for sale; impersonation on the rise – news digest

In our latest round-up, we look at US Customs and Brand Protection intercepting a large shipment of counterfeits, Fieldfisher launching a Brexit docketing tool, the USPTO appointing a new counsel, and much more. Read more

20 Oct 2020

Innovation at the EUIPO: spotlight on public outreach and value-add services

In this second part of exclusive insights from the EU Intellectual Property Office, the agency shares more of its value-add tools and services, how it is raising awareness of IP, and its plans for the future. Read more

13 Oct 2020

Coca-Cola brand purge continues; TikTok star in Nintendo trademark spat; EUIPO scam alert – news digest

In our latest round-up, we look at the US Department of Homeland Security investing in an anti-counterfeit blockchain start-up, a next-generation trademark status tool launching, and much more. Read more

23 Sep 2020

A tale of cigarettes and alcohol: CJEU offers oasis for trademark owners

The Court of Justice for the European Union has shed further light on how far individuals can be held liable for the import of infringing goods, providing rights holders with a fresh weapon in the war against counterfeiting. Read more

Brand management

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16 Oct 2020

As Royal Enfield sets its sights on EU and US markets, will the Indian company revitalise the vintage UK brand?

If it can pull off the move, it will be a rare example of a heritage brand that went out of fashion in its original market, only to come back to life decades later. Read more

6 Oct 2020

The problem with likelihood of confusion: why EU trademark law should rely less on ‘real consumers’

A new study analysing trademark infringement cases in the European Union has found that third parties are “being forced to use less effective trademarks” due to an imbalance in EU trademark law. Read more

30 Sep 2020

QAnon™ – the global efforts to trademark a far-right movement

New investigation finds trademark applications around the world related to the controversial QAnon movement, with one applicant revealing an ambitious plan to launch a global brand to “plant trees and save the oceans”. Read more

23 Sep 2020

Copyright’s revenge on designs: Italian Supreme Court applies CJEU Cofemel ruling

An Italian Supreme Court decision concerning the layout of Kiko make-up stores is a welcome sign of the harmonising effect of the Court of Justice of the European Union’s Cofemel ruling, but could open the door to the protection of 3D designs with little originality or that are mainly functional. Read more

Enforcement and Litigation

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16 Nov 2020

Good news for Ferrari as CJEU rules that use of mark for second-hand car sales may be sufficient to constitute genuine use

In a decision that will be welcomed by trademark owners, the Court of Justice of the European Union has held that use of Ferrari’s TESTAROSSA mark for spare parts and second-hand vehicles may be sufficient to constitute genuine use of the mark. Read more

12 Nov 2020

FRIGIDAIRE: General Court casts a chill on the notion of genuine use

This decision of the EU General Court in an action for the revocation of Electrolux’s mark FRIGIDAIRE is a further reminder of the difficulty of quantifying and assessing the nature of genuine use. Read more

6 Nov 2020

General Court confirms lack of likelihood of confusion between DECATHLON and ATHLON

This decision of the EU General Court shows that, where two trademarks have a weakly distinctive element in common, the impact of such similarity on the global assessment of the likelihood of confusion will be low. Read more

5 Nov 2020

SMART:)THINGS: a smile does not wipe away descriptiveness

The EU General Court has confirmed that the emoticon ‘:)’ was devoid of any distinctive character and, therefore, could not divert the relevant public’s attention from the descriptive message conveyed by the word elements ‘smart’ and ‘things’. Read more

Government/Policy

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29 Oct 2020

Advancing the EU IP agenda in Southeast Asia: interview with IP Key’s Tiago Guerreiro

As the scheme winds down on its four-year strategic plan in Southeast Asia, WTR catches up with project leader Tiago Guerreiro on the initiative’s successes and future goals. Read more

29 Oct 2020

What the UK’s new GI approach means for EU and US trade agreements

While the EU's silence attempts to have the UK squirming, the new GIs place the UK in a favourable position with its non-EU allies. Read more

12 Oct 2020

“An opportunity to break new ground” – why GI negotiations between Australia and EU could be positive, despite concerns

The FTA negotiations have Australia pressured to adapt an EU-centric geographical indication regime. Local experts tell WTR of the concerns felt by rights holders. Read more

14 Sep 2020

The impact of covid-19 on intellectual property and the digital landscape

With online shopping and communication booming, the role of e-commerce companies is coming under greater scrutiny. The global pandemic could provide an opportunity to transform the ways in which they are regulated. Read more

Law Firms

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27 Oct 2020

Meissner Bolte

We got a brand-new, superb modern office in Dusseldorf – all our other offices are jealous! The Dusseldorf office has also been strengthened with the addition of attorney at law Michael Munsch and patent attorneys Markus Wanke and Constantijn van Lookeren Campagne. Read more

27 Oct 2020

GLP

We are proud to say that GLP has been involved in multiple litigation cases concerning large global companies. Read more

27 Oct 2020

J A Kemp

Communication is critical when managing a team. An open door (or open-Zoom) policy is essential. Read more

27 Oct 2020

PADIMA

The most important thing is to consider imitations – not only their prevalence in the industry or sector in which the client is operating, but also the client’s experience in the market. Read more

IP Offices

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20 Oct 2020

Innovation at the EUIPO: spotlight on digital tools and services

In the latest in our series on IP innovation, the EU Intellectual Property Office shares the innovative digital tools and services it has launched or is developing for the future. Read more

14 Oct 2020

“Chinese undertakings have come back quickly and forcefully”: EUIPO executive director reveals the latest filing trends

In a fireside chat at WTR Connect, Christian Archambeau, executive director of the EUIPO, provided insight into the changing filing patterns that have seen Chinese applicants become the top filers at the office, as well as an update on efforts to fight the scourge of solicitation scams. Read more

17 Sep 2020

MESSI scores win over MASSI but legal expert laments CJEU’s “unfortunate” decision

The Court of Justice of the European Union has dismissed appeals against a judgment of the General Court authorising football player Lionel Messi to register the trademark MESSI for sports equipment and clothing. Read more

4 Sep 2020

EUIPO joins WIPO Digital Access Service for EU registered design applications

In a welcome announcement, the EUIPO has confirmed that it is now possible for any submitted EU registered design application to be made available to the Digital Access Service run by WIPO. Read more

Online

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14 Sep 2020

Battle lines drawn over intermediary liability as Digital Services Act consultation closes

The public consultation over the European Commission’s Digital Services Act ended last week, and on the issue of intermediary liability, the commission is faced with a choice between evolution or revolution. Read more

21 Jul 2020

What constitutes “using” a sign under Article 5(1) of Directive 2008/95?

The Court of Justice of the European Union has clarified that, under Article 5(1) of Directive 2008/95, an infringer will only be responsible for removing infringing content which it has placed online itself. Read more

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

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

Portfolio Management

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3 Nov 2020

SAKKATTACK decision: a certain degree of complementarity is not sufficient to render goods similar

This decision of the EU General Court highlights that the fact that goods falling within different classes are complementary is not sufficient to render these goods similar, even where they are made from the same materials. Read more

28 Oct 2020

CJEU clarifies how to assess distinctive character of mark to be applied to goods used to deliver a service

In a case involving a mark consisting of red, orange and white ellipses placed in a specific position on buses and trains, the Court of Justice of the European Union has provided guidance on the criteria to take into account when determining the distinctiveness of a mark intended to be applied to goods used to deliver a service. Read more

27 Oct 2020

METIDA

At METIDA we always focus on the client. Our goal is to serve them with the best quality by offering our unique value proposition. Read more

22 Oct 2020

General Court considers application for restitutio in integrum submitted by licensee

The EU General Court has held that a licensee cannot apply to have its rights re-established on the ground that the proprietor of the mark has failed to act, and be permitted to go against the wishes of the proprietor who consciously decided not to renew its registration. Read more

Trademark law

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14 Sep 2020

Gross Domestic Failure – Banksy trademark portfolio “at risk” after registration ruled invalid

Street artist Banksy has had a trademark for one of his well-known artworks cancelled for being filed in bad faith, with the panel claiming that Banksy’s Gross Domestic Product shop “undermined” the case. Read more

28 Jul 2020

Brexit: UKIPO launches consultation to protect UK attorneys in change to address rules

The UK Intellectual Property Office has launched a public consultation with regard to a proposed change to its address for service rules, to be implemented once the Brexit transition period ends. Read more

16 Jul 2020

A connected world: learnings from the first internationally linked trademark database

In an exclusive guest post, academics in Australia share findings from their new study into the first database that links equivalent trademarks across national offices into a single comprehensive offering. Read more

9 Jul 2020

Ferrari partially loses iconic mark as EUIPO’s non-use requirement claims latest victim

Just 39 250 GTOs were built between 1962 and 1964, opening the brand up to a non-use opposition at the EUIPO. Read more

Twitter

25 Nov 2020

@WTRmagazine RT @MarksmenTweets: The Michael Gleissner Files: massive scope of #trademark and #domain portfolio revealed in exclusive data | @WTRmagazin… Read more

24 Nov 2020

@WTRmagazine RT @WTRmagazine: Michael Gleissner uncovered: a major new WTR investigation identifies over 6,800 trademarks and 6,900 domain names that ap… Read more

24 Nov 2020

@WTRmagazine Michael Gleissner uncovered: a major new WTR investigation identifies over 6,800 trademarks and 6,900 domain names… https://t.co/5IDqlk0LIy Read more

24 Nov 2020

@WTRmagazine Computing and software brands share price plunge continues downward pressure on WTR Brand Elite performance.… https://t.co/lCZcb4DZPL Read more