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European Union

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.

Live updates: IP offices implement measures in wake of coronavirus crisis
Call for government action over fake pharmaceuticals as study reveals scale of global problem
24 Mar 2020

Call for government action over fake pharmaceuticals as study reveals scale of global problem

A new study has estimated the total value of counterfeit pharmaceuticals traded worldwide to be up to €4.03 billion, leading to a call for governments to do more to tackle the illicit trade of fake pharmaceuticals.

EUIPO issues draft guidance on examination of new types of trademarks: reaction
16 Mar 2020

EUIPO issues draft guidance on examination of new types of trademarks: reaction

These documents will likely form the best practices for examining absolute and relative grounds for invalidity and refusal of sound, motion, multimedia and hologram marks.

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30 Mar 2020

EUIPO guidelines: more guidance now available

The EUIPO’s new trademark and design guidelines entered into force as of 1 February 2020. While there are no fundamental changes to the 2017 version of the trademark guidelines, the new guidelines shed light on various aspects of interest for practitioners. Read more

27 Mar 2020

Success for Cypriot halloumi producers as CJEU sends BBQLOUMI case back to General Court

In opposition proceedings involving the mark BBQLOUMI and the earlier collective mark HALLOUMI, the Court of Justice of the European Union has ruled in favour of the Cypriot halloumi producers and referred the case back to the General Court. 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

23 Mar 2020

CJEU criticises General Court for using “less attractive” as measure of damage to marks with a reputation

In Tulliallan Burlington Ltd v EUIPO, the Court of Justice of the European Union has set aside the decisions of the General Court in opposition proceedings involving earlier marks with a reputation. Read more

Anti-Counterfeiting

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24 Feb 2020

Bringing sports and e-sports IP strategies together: interview with FIFA’s Daniel Zohny

WTR sat down with FIFA's Daniel Zohny at INTA's recent Europe conference 'Brands, Sports, and E-sports: A Brand ®evolution' to discuss how e-sports could radically change the work of sports IP professionals. 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

7 Feb 2020

OK BOOMER trademark refusal; WIPO leadership battle intensifies; EUIPO green stats – news digest

In our latest round-up, we look at the debate over the Washington Redskins name being reignited, a wooden box that could ‘solve the counterfeit sneaker crisis’, a new version of DesignView being launched, and much more. Read more

28 Jan 2020

Japan Patent Office launches Trademark Fist, IP firm coronavirus response, and EUIPO updates Brexit information: news digest

In our latest edition, we look at Pablo Escobar’s IP being put up for sale, the Singapore registry visiting Turkey, Malta joining DesignClass, the Tajikistan IP Office giving its annual trademark update, and much more. Read more

Brand management

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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

23 Jan 2020

A third of companies admit uncertainty over post-Brexit trademark strategy

A new study has revealed that a third of UK and European businesses remain uncertain of what their trademark registration strategy will be after the UK leaves the European Union. Read more

2 Jan 2020

#FairUse? Third-party trademarks in social media hashtags

European and US case law suggests that there are very few situations in which use of a third party’s trademark in a hashtag is permissible. As a result, those looking to advertise on social media need to be aware of the strict rules that apply. Read more

24 Dec 2019

How to prove use without invoices – lessons from BIG MAC decision

Any evidence of genuine use is likely to include invoices for products bearing the relevant mark, but what if there are no invoices? The recent BIG MAC case provides useful guidance on which alternative types of evidence are viewed most favourably by the courts and IP offices, and how best to present these. Read more

Enforcement and Litigation

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20 Mar 2020

CJEU specifies at which stage “marketing circumstances” should be taken into account

The Court of Justice of the European Union has clarified that, although the marketing circumstances are a relevant factor in the application of Article 8(1)(b) of Regulation 207/2009, they are not to be taken into account at the stage of the assessment of the similarity of the signs. Read more

18 Mar 2020

Balmain case: do not gamble on specialised public where mark has low distinctive character

The EU General Court has upheld a decision of the Fifth Board of Appeal of the EUIPO rejecting luxury fashion house Balmain’s application for the registration of a figurative mark depicting a lion’s head in Classes 14 and 26. Read more

13 Mar 2020

General Court: Board of Appeal erred in finding likelihood of confusion between CORNEREYE and BACKEYE

The General Court has annulled a decision of the First Board of Appeal of the EUIPO in opposition proceedings involving the marks CORNEREYE and BACKEYE, finding that the board’s decision was vitiated by an error of assessment. Read more

10 Mar 2020

General Court annuls Board of Appeal decision due to misapplication of Article 7(1) of Regulation 6/2002

In Bog-Fran v EUIPO, the EU General Court has found that the Third Board of Appeal of the EUIPO had erred in its assessment of the evidence of disclosure of the earlier design and misapplied Article 7(1) of Regulation 6/2002. Read more

Government/Policy

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21 Jan 2020

“UK will become paradise for free riders”: CJEU referral highlights potential Brexit IP schism

Four questions have been referred to the CJEU which could lead to a landmark judgement on a trademark owners’ rights to stop resales. The decision may further enlarge the gulf between the UK and the EU's position on exhaustion post-Brexit. Read more

10 Jan 2020

China is top threat and Saudi Arabia added to EC’s third-country priority list

The European Commission has published its biennial report on protection and enforcement of IP rights in third countries, with some new additions to the priority list as well as an update to the countries which require further monitoring. Read more

10 Jan 2020

CANNABIS decision: coffee and (space) cakes at the General Court

In Conte v EUIPO, the EU General Court has confirmed that the mark CANNABIS STORE AMSTERDAM was contrary to public policy or to accepted principles of morality under Article 7(1)(f) of EU Regulation 2017/1001. Read more

6 Jan 2020

Current EU non-agricultural protections not equipped for many products, argues new academic paper

The existing AO system of protection is too restrictive to effectively act as a sui generis GI regime for many non-agricultural products, contends new research - which calls for the scaling up of a EU-wide Protected Geographical Indications scheme. Read more

Law Firms

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24 Feb 2020

Five practical steps to improve wellbeing in the workplace

Whether working in the corporate or law firm environment, trademark practice leaders should ensure that they have a coherent wellbeing strategy in place. Read more

28 Jan 2020

How mental health awareness initiatives are changing the legal workplace

As firms become wise to the drastic toll that poor mental health takes on the legal workforce, what are they doing to tackle the problem directly? WTR looks at EIP's mental health first-aider scheme and catches up with Dentons' chief mindfulness officer. Read more

20 Jan 2020

Rocketeer prepares for take-off: exclusive first look at Simmons & Simmons’ AI-driven conflict prediction tool

Simmons & Simmons has developed an innovative AI-driven tool which predicts the outcome of EU trademark conflicts to 93% accuracy. WTR sat down with its project lead to discuss how AI could change trademark practice. Read more

17 Dec 2019

Scotch Whisky GI protection in Cambodia, Cuba joins TMview, and Frozen 2 lawsuit: news digest

In our latest round-up, we look at the Chinese Supreme Court ordering Muji to pay $89,000, US Customs cracking down on fake handbags, the EUIPO inviting comments on its trademark evidence project, and much more. Read more

IP Offices

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17 Mar 2020

Hand in hand – legal certainty and EUIPO’s discretionary powers

The principle of legal certainty is complex, but it is acutely felt if it is not implemented and has taken root in the administration and examination of government bodies. Read more

13 Mar 2020

Class 9 applications skyrocket due to expansion – and domination – of the tech industry

Data analysis shows that software is the most popular product, and gaming companies are some of the top applicants within the industry. Read more

11 Mar 2020

EUIPO data reveals 10 years of robust growth in RCD filings

A new report by the EUIPO has revealed a significant rise in registered Community designs (RCDs) over the past decade, with the number of filings increasing by 36.2% between 2010 and 2019. While EU states account for 72% of these, applications from China have boomed over the period. Read more

10 Mar 2020

Trump’s EU trademark revocations provide another lesson on evidence of use

Three of US President Donald Trump’s EU trademarks have been partially revoked by the EUIPO. At the centre of the failed defence against the cancellation action is the evidence submitted. Read more

Online

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3 Dec 2019

A bold new era for TMview; improving the world’s largest free trademark search engine

In an exclusive guest post, the team behind the EUIPO’s flagship platform share tips on making the most of TMview’s new features – and call for practitioners to give their feedback to ensure that it meets the needs of the trademark community. Read more

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. Read more

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

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

Portfolio Management

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6 Mar 2020

CJEU: FACK JU GÖHTE is not contrary to accepted principles of morality

The Court of Justice of the European Union has set aside a decision of the General Court finding that the mark FACK JU GÖHTE was contrary to accepted principles of morality under Article 7(1)(f) of Regulation 207/2009. Read more

4 Mar 2020

General Court: EUIPO erred in finding no likelihood of confusion between LATV3D and TV3

In opposition proceedings involving the mark LATV3D and the earlier mark TV3, the General Court has found that the EUIPO had failed to consider the consequences of the fact that the entirety of the earlier mark is contained in the mark applied for. Read more

28 Feb 2020

General Court rebukes EUIPO Board of Appeal for lack of reasoning

In a decision that could usher in a new wave of legal certainty, the EU General Court has annulled a decision of the First Board of Appeal of the EUIPO for failing to provide sufficient reasoning. Read more

26 Feb 2020

General Court maintains strict approach to assessment of distinctive character

In Hickies Inc v EUIPO, the General Court has confirmed that a 3D trademark consisting of the shape of a shoelace was devoid of any distinctive character for goods in Class 26. Read more

Trademark law

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2 Jan 2020

Use it or lost it: no one is too big to lose a trademarks for non-use

There is an almost infinite amount of evidence that could be put forward to support a claim that a trademark has been used, but it has to be up to scratch. Failure to effectively prove use can have dire consequences – as the recent BIG MAC decision illustrates. Read more

26 Dec 2019

EU regulations smooth the way for FMCG labelling rules

The publication of the EU Regulation on the Provision of Food Information to Consumers has created a bridge between EU labelling rules and the introduction of new obligations to meet the growing demands of the most discerning customers of fast-moving consumer goods. Read more

13 Dec 2019

“Europe is not yet prepared” – reaction as Cannabis mark ruled unregistrable by EU court

The General Court of the European Union has ruled against a trademark due to its implied links to illegal narcotics. Industry experts give their reaction. Read more

10 Dec 2019

Frozen 2 versus Christian Louboutin: could Anna’s red-soled shoes lead to a trademark dispute?

In Disney's Frozen 2, main character Anna is seen wearing red-bottomed boots, with some claiming a similarity to the iconic footwear of fashion brand Christian Louboutin. We speak with IP experts on the issues potentially at play. Read more

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Elizabeth Janda
Co-Chair Trademarks
Southfield MI, United States
Brooks Kushman PC
View full biography
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