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European Union

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.

Brexit, China, surplus and SMEs: takeaways from Christian Archambeau’s first press briefing as EUIPO head
16 May 2019

What you need to know before the controversial Sky v Skykick case hits the CJEU

On Monday, the Court of Justice of the European Union holds a hearing in the closely followed Skykick case. We look at how this case could have a significant impact on trademark practice.

24 Apr 2019

IP Australia, EUIPO and UKIPO ranked most effective IP offices

A new survey conducted by WTR has found that IP Australia is the IP office most lauded by trademark practitioners around the world. However, users raised concerns with operations at a number of IP offices.

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16 May 2019

General Court reaffirms that new relative grounds for refusal cannot be raised after expiry of relevant period

In Lupu v EUIPO, the EU General Court has confirmed that, within the context of opposition proceedings, relative grounds for refusal cannot be raised after the expiry of the term prescribed by law. 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

13 May 2019

Border seizure measures in the European Union

According to a series of studies on IP infringement published in December 2016 by the EU Intellectual Property Office, the presence of fake goods in the marketplace causes the EU economy to lose over €83 billion and 790,000 jobs every year, as well as €14.3 billion in government revenue. Read more

13 May 2019

Brexit and the future of anti-counterfeiting collaboration

Brexit is a difficult road to travel and ensuring continued high levels of enforcement cooperation will prove difficult. Once the United Kingdom withdraws from the European Union, it will effectively become a third country that is unlikely to have direct access to many key databases.  Read more

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Anti-counterfeiting

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12 Apr 2019

Fake Tequila auction, ICANN to decide fate of ‘.amazon’, and EUIPO releases short movie: news digest

In our latest edition, we look at a Wine Label IP Directory being launched, AB InBev being sued by a clothing brand for trademark infringement, The PCT Network going global, and much more. Read more

8 Apr 2019

Surprise decision on EU goods in transit provides welcome boost for rights holders

A somewhat surprising – and widely criticised – decision from the Court of Justice of the European Union on the debranding and rebranding of goods in transit has provided trademark owners with a valuable tool for enforcing their IP rights. 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

28 Mar 2019

How Signify’s IP team undertook its global rebrand from Philips Lighting: exclusive interview

Senior IP counsel Joeri Mombers provides a detailed insider’s view of lighting giant Signify's "once in a lifetime" trademark project. Read more

Brand management

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28 Feb 2019

How to manage brands at a technology licensing company – exclusive interview with Arm’s David Llewellyn

Arm Holdings’ head of trademarks explains how he made the company’s brand function more visible to colleagues and licensing partners, and why he is a strong advocate of bringing trademark work in-house. Read more

8 Feb 2019

Irish Whiskey GI protection, no-deal Brexit anti-counterfeiting “travesty”, and Alibaba and eBay on fakes: news digest

In our latest round-up, we look at Brainbase raising money to bolster its licensing platform, the discovery of fake leukaemia drugs, the EUIPO turning to blockchain to fight counterfeiting, and much more. Read more

31 Jan 2019

L’Oreal revealed as top filer of EU trademarks in 2018 as applications to EUIPO rise 5%

In an exclusive guest post, Robert Reading from CompuMark reveals the top corporate filers at the EUIPO in 2018 and looks at some of the key trends from the registry in the past 12 months. Read more

29 Jan 2019

WHOIS woes, IP mind maps, and understanding counterfeiters: takeaways on managing trademark assets

Highlights from our Managing Trademark Assets Europe event, wherein senior brand professionals shared insights on budget management, fighting counterfeits with limited resources, and more. Read more

Enforcement and litigation

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16 May 2019

General Court reaffirms that new relative grounds for refusal cannot be raised after expiry of relevant period

In Lupu v EUIPO, the EU General Court has confirmed that, within the context of opposition proceedings, relative grounds for refusal cannot be raised after the expiry of the term prescribed by law. Read more

13 May 2019

Border seizure measures in the European Union

According to a series of studies on IP infringement published in December 2016 by the EU Intellectual Property Office, the presence of fake goods in the marketplace causes the EU economy to lose over €83 billion and 790,000 jobs every year, as well as €14.3 billion in government revenue. Read more

13 May 2019

Brexit and the future of anti-counterfeiting collaboration

Brexit is a difficult road to travel and ensuring continued high levels of enforcement cooperation will prove difficult. Once the United Kingdom withdraws from the European Union, it will effectively become a third country that is unlikely to have direct access to many key databases.  Read more

2 May 2019

Success for Inditex as General Court upholds appeal in ZARA case

The EU General Court has upheld an appeal by Inditex, the owner of the mark ZARA, finding that use of the figurative ZARA mark would give rise to a risk of unfair advantage being taken of Inditex’s mark. Read more

Goverment/policy

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27 Mar 2019

Warnings issued over controversial copyright law in wake of European Parliament approval

The European Parliament voted yesterday in favour of the new EU Copyright Directive, which has been the focus of intense lobbying. We take a look at what it actually means for platforms and content creators. Read more

21 Mar 2019

European Union to accede to Geneva Act; Brexit uncertainty means United Kingdom poised to become GI battleground

The European Parliament's Legal Affairs Committee has endorsed the European Union acceding to the Geneva Act – a move that could propel the issue of geographical indications back to the top of the trade deal agenda as the United Kingdom looks to its post-Brexit future.   Read more

27 Feb 2019

IP offices of EU, Chile, Singapore and Spain named most innovative in the world

In exclusive research from WTR, the EUIPO has been ranked as the most innovative IP office in the world for the third year in a row. Closely behind are the registries of Chile, Singapore and Spain. 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

Law firms

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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

24 Aug 2018

A-Z of EU trademark court practice and performance: Netherlands to Slovenia

In the fourth of our five-part series, trademark counsel from law firms across Europe provide an overview of the performance of their countries’ EU trademark courts over the past two years. Read more

7 Aug 2018

Audi launches anti-counterfeiting campaign, YouTube brand safety fiasco and TMview expands: news round-up

In our latest round-up, we look at the expansion of the EUIPO’s TMview search platform, Scotch Whisky attaining GI protection in South Africa, Chinese trademarks continuing rapid growth rate, and much more. Read more

27 Feb 2018

No Brexit talk between IP offices, Scooby Doo infringement and Syria establishes trademark court: news round-up

In the latest round-up, we look the latest IP case data from Saudi Arabia, the establishment of a trademark court in Syria, and warnings over counterfeit security certificates. Read more

IP offices

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2 Apr 2019

Cornish Pasty ranked most well-known UK GI product, as associations warn of Brexit risk

A new study has identified the most well-known geographical indication (GI) products in the United Kingdom, with GI association experts concurrently warning of the risks that Brexit poses. Read more

13 Mar 2019

Don't panic? What the UK government’s second major Brexit defeat means for trademark owners

UK prime minister Theresa May suffered a second catastrophic defeat in as many months as the House of Commons rejected her Brexit deal last night. We take a look at what this latest development means for trademark owners. Read more

4 Mar 2019

New Brexit guidelines give reassurance to rights holders, but attorneys’ rights remain uncertain

New guidelines reaffirm the UK's commitment to protecting existing EU trademarks and to recognising the priority date of pending European applications. But UK attorneys remain none the wiser about their EUIPO rights of representation. Read more

27 Feb 2019

IP offices going above and beyond

In exclusive research, WTR looks at the innovative non-core tools and services being offered by national IP registries around the world. Read more

Online

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9 Jan 2019

Is Brexit spurring a ‘.eu’ domain exit?

The latest Progress Report released by EURid has revealed a drop in the overall number of registrations under ‘.eu’. Is the uncertainty surrounding Brexit a factor in the decrease in the number of domain name registrations and renewals? Read more

21 Dec 2018

Cybersecurity insurance: an opportunity for online brand protection?

Cyberinsurance has become an indispensable tool in the management of internet-based risks and a key asset when it comes to online brand protection strategies. Read more

15 Oct 2018

Genericism: is the trademark education video the new norm?

The recent Velcro video was highly successful in generating discussion about the use of the company’s trademark, providing crucial insight into brand communication strategies. Read more

12 Sep 2018

The future of trademarks

Global brand owners face increasing challenges in protecting, managing and enforcing their IP rights. These include challenges arising from new technologies, new business models and new markets. Read more

Portfolio management

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30 Apr 2019

General Court: outward use not necessarily aimed at end consumers

In Hesse v EUIPO, the EU General Court has upheld a decision of the First Board of Appeal of the EUIPO in revocation proceedings involving the mark TESTA ROSSA, rejecting arguments relating to proof of use and equal treatment. Read more

29 Apr 2019

CJEU calls time on The Green Effort Limited v EUIPO case

The decision of the Court of Justice of the European Union in The Green Effort Limited v EUIPO shows that the calculation of time limits is critical to every case and that the courts will not hesitate to enforce such time limits. Read more

26 Apr 2019

Opposition Division finds likelihood of confusion between SO DIVINE and SO…? LOVELY

The Opposition Division of the EUIPO has partially upheld an opposition against the registration of the figurative mark SO DIVINE due to a likelihood of confusion with earlier SO…? LOVELY marks. Read more

25 Apr 2019

General Court: Board of Appeal should have examined alleged enhanced distinctiveness of earlier mark

The EU General Court has annulled a decision of the First Board of Appeal of the EUIPO in which the latter had found that there was no likelihood of confusion between the trademarks BALEA and ALBÉA. Read more

Trademark law

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25 Apr 2019

Focusing on trade dress in the European Union

As the use of distinctive and non-traditional signs continues to evolve, EU legislation now allows for objects, actions and patterns, among others, to be registered as trademarks, with a key focus on trade dress. Read more

17 Apr 2019

CJEU considers consequences of inconsistency between classification of trademark and its graphic representation

Following a request for a preliminary ruling, the Court of Justice of the European Union has considered the requirements relating to the graphic representation of a sign and those relating to the distinctive character of a colour mark. Read more

15 Apr 2019

“You need to be willing to stay the course”: brand management insights from Coty Inc’s Joseph Conklin

In an exclusive interview with WTR, Joseph Conklin, senior vice president and global deputy general counsel for beauty company Coty Inc, has revealed how he approaches brand rights enforcement and ensures cross-company collaboration. Read more

9 Apr 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

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IP offices of EU, Chile, Singapore and Spain named most innovative in the world

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Fake Tequila auction, ICANN to decide fate of ‘.amazon’, and EUIPO releases short movie: news digest

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

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What you need to know before the controversial Sky v Skykick case hits the CJEU

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General Court reaffirms that new relative grounds for refusal cannot be raised after expiry of relevant period

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General Court reaffirms that new relative grounds for refusal cannot be raised after expiry of relevant period

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European Union adopts new ‘.eu’ Regulation

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Border seizure measures in the European Union

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Brexit and the future of anti-counterfeiting collaboration

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Margaret Arnott
Partner
London, United Kingdom
Mathys & Squire LLP
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