European Union

Craft Europe steps up advocacy for new non-agricultural GI regime

Speaking to WTR, a spokesperson for the group argues that such a regime would have economic, sustainability and anti-counterfeiting benefits for EU and non-EU rights holders.

Craft Europe steps up advocacy for new non-agricultural GI regime
Live updates: IP offices implement measures in wake of coronavirus crisis
9 Sep 2021

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.

EUIPO hits major registration milestone as upward trajectory continues: inside the data
24 Aug 2021

EUIPO hits major registration milestone as upward trajectory continues: inside the data

Two million EU trademark registrations have officially been filed at the EUIPO.

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Today

When can a claim that a trademark is well known be introduced?

This decision of the General Court highlights that the rationale of Article 16(1) of Delegated Regulation 2018/625 is to leave more flexibility - as opposed to opposition proceedings - to supplement the facts, evidence and arguments in support of an application for invalidity. Read more

20 Sep 2021

EURid extends citizenship criteria and gives last chance to UK registrants

The ‘.eu’ registry has updated its registration rules to enable expats from three additional countries to register ‘.eu’ domain names, and announced that Brexit-related withdrawn domain names could still be recovered by the end of this year. Read more

15 Sep 2021

Bad news for Sony as General Court confirms that VITA mark was not put to genuine use

This decision of the General Court offers insight into whether use of a trademark for gaming consoles would constitute use for “data carriers containing programs” and “audio and/or image carriers (not of paper)”. Read more

13 Sep 2021

Blow for Sony in GT RACING case

Sony has failed in its attempt to prevent the registration of GT RACING based on its GT and GRAN TURISMO marks, which it uses for its popular Gran Turismo video game. Read more

Anti-Counterfeiting

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23 Jul 2021

Puma settles ‘Roar’ logo dispute; UKIPO warns about priority filings; ECTA creates SME task force – news digest

In our latest round-up, we look at Philadelphia customs officials seizing counterfeit auto parts, a US Senator introducing a resolution commemorating increased anti-counterfeiting efforts, and much more. Read more

9 Jul 2021

North Korea counterfeit crackdown; Banksy trademarks criticised; MARQUES annual meeting update – news digest

In our latest round-up, we look at a court ordering Lotus Health Group to sell trademarks, the Georgian IP office establishing a GI commission, Invest Europe and EUIPO teaming up to support SMEs, and much more. Read more

23 Jun 2021

Lego on social media enforcement; collaborating to fight fakes; sustainable disposal of counterfeits: takeaways from the International IP Enforcement Summit

We present a range of strategic takeaways from this week's International IP Enforcement Summit. Read more

16 Jun 2021

Observatory paper highlights good practices for social media companies to consider in fight against fakes

A new discussion paper from the European Observatory on Infringements of Intellectual Property Rights has taken a deep dive into the challenges faced by IP owners, law enforcement authorities and tech companies in tackling infringement on social media. Read more

Brand management

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26 Jul 2021

An “emphatic win" as Sky emerges victorious in latest round of dispute with SkyKick

The Court of Appeal hands down judgment in the latest round of the dispute between Sky and SkyKick, with the latter vowing to fight on with an appeal to the UK Supreme Court. Read more

7 Jul 2021

Latest WTR report identifies top portfolio builders and presents thought leadership from in-house leaders

Titled “Inside in-house operations: how to build world-class trademark functions and portfolios”, the report takes a deep dive into portfolio, brand and in-house team management. Read more

7 Jul 2021

The Europe Trademark 50

The top 50 owners of the largest active European trademark portfolios together filed 15% fewer marks last year than they did the year before, dropping from 11,427 applications down to 9,902. Read more

2 Jul 2021

Coca-Cola wins TTAB claim; adidas and Thom Browne clash; EUIPO breaks trademark application record – news digest

In our latest round-up, we look at the USPTO eliminating the handwritten signature requirement, the Finnish IP office revamping its trademark web pages, and much more. Read more

Enforcement and Litigation

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10 Sep 2021

General Court’s (e)message is loud and clear on law and practice applicable to invalidity assessment

The decision of the General Court in this dispute between Apple and e*Message over the validity of the mark E*MESSAGE underlines the continuity and retroactivity of EU legislation and case law. Read more

19 Aug 2021

SHA v SHAPERFECTION: Opposition Division erred in finding that coinciding element played independent distinctive role

This decision of the Board of Appeal of the EUIPO highlights that the determination of the dominant and distinctive element of a trademark plays an important role in the global assessment of the likelihood of confusion. Read more

12 Aug 2021

General Court: Framery’s mobile workspace lacks individual character in view of state of the art

The decision shows, among other things, that a design will not necessarily be regarded as not having been disclosed when only some of its features are visible in the documents put forward to establish its disclosure. Read more

9 Aug 2021

General Court decision highlights risks of using mark in form differing from the one registered

This judgment of the EU General Court will be of particular interest to the fashion sector, in which it is common practice to combine a house mark with a sub-brand to identify a specific line of goods. Read more

Government/Policy

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9 Aug 2021

CCFN keeps an eye on Mexico GI regime after a year of USMCA

Focus remains on Mexico adhering to the terms of the United States-Mexico-Canada Agreement as Consortium for Common Food Names senior director Shawna Morris considers the treaty’s effects on geographical indications over the past 12 months. Read more

29 Jul 2021

GI, PDO or TSG? How to choose the best options for traditional food and drink in Europe

The Long Read: Producers of traditional European food and drink have a buffet of IP rights to choose from. Baker McKenzie’s Claire France and Jessica Le Gros provide a straightforward guide to making the right selection. Read more

10 Jul 2021

INTA’s Iceland case amicus brief throws the spotlight on the registrability of country names as trademarks

In our latest Saturday opinion column, we scrutinise the amicus brief submitted by INTA on the registrability of country names as trademarks. Read more

2 Jul 2021

Geographical indications: united in diversity

Each day this week we have presented an exclusive update from the EUIPO. For the final piece in the series, the office turns its attention to the geographical indication (GI) landscape. Read more

Law Firms

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1 Jul 2021

Top filers, unprecedented applications and a transformed landscape: a year in the life of the EUIPO

The Long Read: Worrying drops in filing levels followed by record highs have made for an eventful year at the EUIPO. WTR’s Trevor Little considers how these and other events are affecting the IP ecosystem and could affect the future of the register itself. Read more

12 Jun 2021

Why the UK could be flooded with cheap imported branded products if post-Brexit exhaustion of rights regime is changed

In this week’s opinion piece, Lee Curtis and Rebecca Field from HGF explain why it is crucially important for brand owners to have their say as part of the UK government's post-Brexit exhaustion of IP rights consultation. Read more

11 Jun 2021

Crocs calls out Skechers; LegalZoom gears up for initial public offering; SurveyMonkey rebrands as Momentive – news digest

In our latest round-up, we look at INTA updating its anti-counterfeiting best practices, the American Apparel & Footwear Association joining a campaign against illegal trade, Amazon and HanesBrands teaming up, and much more. Read more

4 May 2021

Wrigley takes on THC-infused Skittles; Diablo trademark dispute; EUIPO launches SME support fund – news digest

In our latest round-up, we look at a court valuing the name and likeness of Michael Jackson, Anaqua acquiring SeeUnity, ICANN publishing its ‘proposed for adoption’ financial and budget plans, and much more. Read more

IP Offices

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5 Aug 2021

Exclusive roundtable – how four leading IP offices are cracking down on scams and fraudulent activity

The Long Read: Scams targeting trademark owners are fast becoming commonplace and increasingly sophisticated. Four leading IP offices share their insights on which scams are most prevalent, what you can do to stay safe, the resources on offer to help and how offices are collaborating across borders to fight fraudsters. Read more

1 Jul 2021

Reaching out to SMEs: an EUIPO perspective

Each day this week we have been presenting an exclusive update from Alicante. Read more

30 Jun 2021

Turning disputes into opportunities: alternative dispute resolution at the EUIPO

Each day this week we will present an exclusive update from the EUIPO. Today we turn our attention to alternative dispute resolution (ADR) offerings. Read more

29 Jun 2021

How innovation drives the EUIPO

The EUIPO expands on how innovation is harnessed and utilised, and what offerings users can expect in future. Read more

Online

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31 May 2021

EUIPO observatory study reveals cybersquatting trends and tactics

New data from the EUIPO’s European Observatory on Infringements of Intellectual Property Rights has uncovered the tactics used by cybersquatters and how these differ according to the industry in which the targeted brand operates. Read more

17 May 2021

Seven takeaways on IP infringement in social media: what the data reveals

The European Observatory on Infringements of Intellectual Property Rights has studied almost 4 million online conversations and revealed that 11% of those focused on physical products could be related to counterfeit goods. Read more

16 Mar 2021

EUIPO approves blockchain platform; NFT trademark mystery; SHOP SAFE Act hearing set – news digest

In our latest round-up, we look at how the pandemic is changing consumer habits, Treasury Wine inking a licensing deal for its US brands, Iran joining the Madrid e-filing community, and much more. Read more

15 Feb 2021

81,000 ‘.eu’ domain names hang on the Brexit precipice

EURid has announced that it had suspended over 81,000 ‘.eu’ domain names held by registrants citing GB/GI as country code pursuant to the end of the United Kingdom’s 11-month Brexit transition period. Read more

Portfolio Management

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5 Aug 2021

Bad news for Victoria’s Secret as General Court refuses to cancel BODYSECRETS

In a blow to US lingerie, clothing and beauty company Victoria’s Secret, the General Court has confirmed that the figurative mark BODYSECRETS possessed the requisite distinctiveness for goods in Classes 3, 5 and 25. Read more

3 Aug 2021

Look sharp! The importance of robust and objective evidence

This decision of the EUIPO highlights the importance of submitting sound and objective evidence in design invalidity proceedings in order to show prior disclosure of the design invoked. Read more

2 Aug 2021

General Court: shape of Guerlain lipstick may be registered as 3D mark

In a decision that will be welcomed by entities seeking to protect 3D marks, the General Court has annulled a EUIPO decision finding that Guerlain’s mark, which consists of the shape of a lipstick, lacked distinctive character. Read more

29 Jul 2021

Sound marks in the European Union: General Court rules for the first time on registration of sound mark submitted in audio format

An audio file containing the sound made by the opening of a drinks can, followed by silence and a fizzing sound, cannot be registered as a trademark for various drinks and metal containers for storage or transport. Read more

Trademark law

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29 Jul 2021

Benelux

No separate trademark laws exist in the Netherlands, Belgium and Luxemburg. Benelux trademark law is governed by the Benelux Convention on Intellectual Property, the current version of which entered into force on 1 March 2019. Read more

29 Jul 2021

Protection of titles under copyright law and trademark law

“A title is designed to catch the eye and to promote the value of the underlying work” (Mattel Inc v MCA Records Inc, 296 F.3d 894 (9th Cir 2002)). Read more

29 Jul 2021

The economic value of designs

When two products are equal in price, function and quality, the better-looking product will outsell the other. Read more

21 Jun 2021

“This is a case about intention”: Banksy’s trademark troubles continue as EUIPO invalidates four more marks

The EUIPO Cancellation Division has declared four of street artist Banksy’s trademarks invalid, hitting out at his efforts to circumvent the law”. Read more