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

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

Latest

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17 Sep 2020

No success for Glaxo in protecting purple colour mark

The threshold to demonstrate acquired distinctiveness is extremely high for colour marks; compounded by the many pitfalls intrinsic in survey evidence, meeting such threshold now seems near impossible in practice, even for the most well-known brands. Read more

16 Sep 2020

Shoot for the moon (boots) and if you miss, you’ll land… with a non-distinctive mark

In a blow to Tecnica Group SpA, the manufacturer of the popular ‘moon boots’, the First Board of Appeal of the EUIPO has confirmed that Tecnica’s 3D mark for the shape of its boots lacked distinctiveness. Read more

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

10 Sep 2020

WELMAX case: time limits before the EUIPO and how to calculate them

This decision of the EU General Court considers several interesting procedural issues, such as the time limit for an appeal before the Board of Appeal of the EUIPO and the point from which that time limit starts to run. Read more

Anti-Counterfeiting

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7 Aug 2020

How should authors utilise trademarks to protect their literary works: the European perspective

In the second of this two-part piece, we speak to legal experts to explore the role that trademarks could play in the fight against book piracy in Europe. Read more

6 Jul 2020

Challenging times: anti-counterfeiting in the age of covid-19

Locked-down consumers with heightened health worries could be easy prey for fast-acting counterfeiters. Legal authorities have foreseen some of the risks, but is the European Union sufficiently prepared for an influx of fake medicines and equipment? Read more

10 Jun 2020

“The idea of IP crime as victimless is misguided”: report evidences serious crimes link

A new research report has investigated the link between IP and other forms of serious crime. Released to coincide with World Anti-counterfeiting Day, the study provides useful intelligence for policymakers and rights holders alike. Read more

3 Jun 2020

Europol seizes double illegal pesticides in annual sting: how brand organisations help make the difference

Europol has conducted its most successful exercise against counterfeit pesticides. WTR spoke with the ECPA to learn about the role that its member companies played in the operation. Read more

Brand management

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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

Seizing opportunity in times of crisis: an ECTA update

In this exclusive guest piece, Carina Gommers, second vice president of the European Communities Trademark Association, reflects on the organisation’s work, how it has responded to current global conditions and the challenges and opportunities ahead. Read more

8 Jul 2020

The top filers and agility in action: inside EUIPO operations

World Trademark Review’s annual EUIPO focus assesses current office processes, reveals the most proactive filers and explores how the agency has responded to the impact of covid-19 on its employees, users and offerings. Read more

19 May 2020

“A veiled threat” – UK government releases draft EU free trade agreement with geographical indications omitted

The UK government has published an outline of a free trade agreement with the European Union which omits geographical indications (GIs) – a move that suggests GIs will remain a contentious issue as negotiations continue. Read more

Enforcement and Litigation

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1 Sep 2020

The protection of unregistered well-known marks by the EU courts under Article 6bis of the Paris Convention

This decision of the EU General Court in invalidity proceedings gives a useful overview of the differences between the scope of protection of unregistered well-known trademarks on the one hand, and registered well-known trademarks on the other. Read more

13 Aug 2020

FAKE DUCK v SAVE THE DUCK: it takes two separate tests to assess the likelihood of confusion

In EUIPO v Equivalenza, the Court of Justice of the European Union had underlined that the assessment of the similarity between two signs and that of the likelihood of confusion are two clearly distinguishable tests. This recent decision of the General Court provides a good example of how to carry out these tests. Read more

10 Aug 2020

Bad-faith grounds for invalidating Chinese-character EUTMs

Inner Mongolia Yili Industrial Group Company Limited, a market leader in dairy production in China, has obtained the cancellation of a EUTM containing the word element ‘yili’ and its corresponding transcription into Chinese. Read more

6 Aug 2020

The CJEU does not distinguish between fashion wear and outdoor wear

The Court of Justice of the European Union has found that weather-protective outdoor clothing and fashion streetwear were not independent sub-categories of goods in relation to Class 25. Read more

Government/Policy

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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

8 Jun 2020

“Reprehensible” – GEORGE FLOYD and I CAN’T BREATHE trademark applications filed

WTR has identified trademark applications in the European Union and United Kingdom for GEORGE FLOYD, while numerous applications for I CAN’T BREATHE have been filed at the USPTO. Read more

3 Jun 2020

Study calls for shake-up of geographical indications to forge path towards universal trademark system

In conversation with WTR, the academic behind the research says a shake-up of indications of geographical origin could be the first step towards the “high ideal” of a universal trademark system. Read more

1 Jun 2020

Brexit, post-coronavirus events, and influencing policy: interview with ECTA’s incoming president

WTR sits down with the new president of the European Communities Trademark Association (ECTA) to get the inside track on ECTA’s priorities and how the organisation is maintaining its mission in a covid-19 world. Read more

Law Firms

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28 Aug 2020

Economies are battered but many major offices set for record trademark numbers

As the data continues to be updated, we are able to get a better understanding of the extent of the coronavirus’ impact on the trademark ecosystem. Read more

19 Jun 2020

Four key areas of investment for effective portfolio management

Marks & Clerk reveals the essential systems behind managing a huge international trademark portfolio. Read more

15 May 2020

St Andrews Links Trust lands in trademark bunker; new Benelux online tools; Gleissner covid-19 donation – news digest

In our latest edition, we look at Hard Rock International acquiring the rights to Hard Rock Hotel & Casino, the KIPO president getting dunked with flowers, and more. Read more

6 May 2020

Michael Gleissner defeated at the EUIPO: lessons from the lawyers at the helm

In an exclusive guest post, lawyers from international law firm Bird & Bird present an inside look at a case they were recently involved in featuring notorious trademark filer Michael Gleissner. Read more

IP Offices

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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

24 Aug 2020

Operations in the time of covid-19: EUIPO service charter reveals impact of pandemic

The EUIPO has released its latest Service Charter results, which track the timeliness of various office services, with a number dropping into the ‘action needed’ category for the first time in years. Read more

18 Jun 2020

How the EUIPO is supporting SMEs amid an economic crisis

EUIPO deputy executive director Andrea Di Carlo reveals the steps that the office is taking to help vulnerable small businesses during the covid-19 pandemic. Read more

8 Jun 2020

Maintaining operations during a pandemic: EUIPO executive director on office’s covid-19 response

As EUIPO staff start to return to its Alicante HQ, executive director Christian Archambeau expands on how the office is handling a “tsunami” of trademarks and the ways in which remote working could give rise to new working practices. Read more

Online

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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

3 Apr 2020

Spike in coronavirus knock-offs; Tiger King trademark fiasco; new TMview and DesignView – news digest

In our latest edition, we look at how counterfeit vaping devices are resurfacing as a major issue, the first well-known trademark being registered in Tajikistan, a new CEO being unveiled at UpCounsel, and much more. Read more

Portfolio Management

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5 Aug 2020

General Court provides guidance on weak trademark elements

In these opposition proceedings involving the marks MEDIFLEX EASYSTEP and STEPEASY, the goods relating to footwear survived the opposition due to the weakness of the elements ‘step’ and ‘easy’ in relation to such goods. Read more

3 Aug 2020

Reputation and the power of the influencer: SUGAR BEAR HAIR v BEAUTY BEAR

This case suggests that the reputation of celebrities and influencers can effectively be transferred to the brands and trademarks that they endorse. Read more

31 Jul 2020

General Court highlights need to prove “relatively constant” use of mark where sales volume is low

This decision of the EU General Court shows that the smaller the commercial volume of the exploitation of a mark, the more important it is for an opponent to produce additional evidence. Read more

29 Jul 2020

General Court highlights differences between raw material goods and finished products

This decision of the EU General Court shows that raw material goods and manufactured/finished products are most likely to be dissimilar due to differences in nature, purpose and distribution channels. Read more

Trademark law

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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

3 Jul 2020

Sky v SkyKick: permission to appeal keeps long-running trademark battle raging on

With the ramifications for partial bad-faith filings still on the table, SkyKick representatives say they are “hopeful” they will be victorious in the end. Read more

29 Apr 2020

“A very significant development”: latest SkyKick ruling could have wide bad-faith implications

The English High Court has partially invalidated trademarks owned by Sky. Legal experts say the ruling could open up a new line of attack for defendants against brand owners. Read more

6 Apr 2020

Navigating geographical indications in the European Union

While European IP practice has begun to actively recognise and protect geographical indications, they are still treated with trepidation in the IP world. Read more

Find an expert

Christian Thomae
Head of Trademarks
Mexico City, Mexico
Dumont