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
EUIPO data reveals long-term rise of Chinese applications, with Huawei the top filer
1 Mar 2021

EUIPO data reveals long-term rise of Chinese applications, with Huawei the top filer

In 2020 China became the number one filing country for EU trademarks and number two for registered Community designs – with EU trademark filings from the country up a staggering 89% year on year.

EUIPO ditches fax and CDs; JPO implements earthquake procedures; Reebok brand up for sale – news digest
19 Feb 2021

EUIPO ditches fax and CDs; JPO implements earthquake procedures; Reebok brand up for sale – news digest

In our latest round-up, we look at Nestle selling its US bottled water business, Anaqua acquiring Quantify IP, Mombasa port seeing an influx of fake vaccine shipments, and much more.

Latest

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26 Feb 2021

General Court rejects late amendment of list of goods

This decision of the General Court highlights that, if an applicant wishes to overcome a distinctiveness issue by amending the list of goods/services, this should be done at the first instance. Read more

24 Feb 2021

General Court confirms lack of likelihood of confusion between PANTHÉ and PANTHER in Class 25

In an arguably surprising decision, the General Court has agreed with the EUIPO that there was no likelihood of confusion between the figurative mark PANTHÉ and earlier word and figurative marks PANTHER in Class 25. Read more

16 Feb 2021

General Court confirms lack of likelihood of confusion between BBQLOUMI and HALLOUMI

Following lengthy opposition proceedings in which the case was appealed to the Court of Justice of the European Union and sent back to the General Court, the latter has reiterated that there was no likelihood of confusion between the figurative mark BBQLOUMI and the collective mark HALLOUMI. Read more

15 Feb 2021

International registrations, Brexit and trademarks in the Crown dependencies and Gibraltar

In a guest piece, Julius Stobbs, founder of Stobbs, details the current requirements for potential trademark registrants in these unique jurisdictions. Read more

Anti-Counterfeiting

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25 Nov 2020

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. Read more

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

Brand management

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9 Feb 2021

Clubhouse spat as $1 billion social network labelled a “bully” over app takedowns

The owner of the registered trademark CLUBHOUSE has accused the rapidly-growing social network app Clubhouse – which has garnered fans including Elon Musk – of spuriously seeking the removal of his app from marketplaces. Read more

28 Jan 2021

Juventus striker Paulo Dybala settles long-running image rights dispute

The player has settled an International Court of Arbitration (ICC) dispute worth around €35 million with his former agent. Read more

25 Jan 2021

A close look at the United Kingdom’s post-Brexit GI regime

In an exclusive guest post, experts at Hogan Lovells explore the current status of geographical indications in the United Kingdom – and what the future could hold for their protection. Read more

29 Dec 2020

Brexit worries allay as Scotch Whisky Association toasts another successful year

For the second year in a row, the Scotch Whisky Association has prevailed as WTR’s Not-for-Profit Organisation Team of the Year. Deputy director of legal affairs Lindesay Low discusses the strategy behind the group’s multiple successes over the past 12 months. Read more

Enforcement and Litigation

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11 Feb 2021

General Court: milk substitute slogan has minimum degree of distinctive character required by Article 7(1)(b)

In a decision that clarifies the requirements for registering trademarks consisting of slogans, the General Court has annulled a EUIPO decision finding that the mark IT’S LIKE MILK BUT MADE FOR HUMANS was devoid of any distinctive character. Read more

8 Feb 2021

General Court upholds likelihood of confusion between bull wine marks

In opposition proceedings between two wine companies, the General court has confirmed that there was a likelihood of confusion between the marks SANGRE DE TORO and CABEÇA DE TOIRO. Read more

1 Feb 2021

Good news for Bacardi as General Court finds likelihood of confusion between 42 BELOW and BLEND 42 VODKA

The EU General Court has confirmed that there was a likelihood of confusion between the figurative mark BLEND 42 VODKA and Bacardi & Co Ltd’s earlier 42 BELOW marks in Classes 33 and 35. Read more

22 Jan 2021

No likelihood of confusion between BIM FREELANCE and BIM READY due to relevant public’s high level of attention

In this arguably debatable decision, the EU General Court concluded - contrary to the EUIPO - that there was no likelihood of confusion between BIM READY and BIM FREELANCE for “training services” in Class 41. Read more

Government/Policy

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3 Feb 2021

Covid-19 and post-Brexit Britain – Sandris Laganovskis on challenges of new EUIPO role

In an exclusive interview with WTR, the new EUIPO deputy director for international cooperation, Sandris Laganovskis, reveals the opportunities and challenges that he foresees in the role. Read more

2 Feb 2021

How the EUIPO’s Ideas Powered for Business fund plans to stimulate SME trademark filings

EUIPO deputy executive director Andrea Di Carlo sat down with WTR to detail last year’s work to engage SMEs and reveal the office's plans for 2021. Read more

4 Jan 2021

New year, same wait for WHOIS data access clarity as governments look to exert pressure

While efforts to develop a global access system for WHOIS data continue, recent developments in the United States and the European Union suggest that governments are willing to require more of registries and registrars. Read more

4 Jan 2021

Brexit: the long and winding road is not over yet

The transitional period may be over, but the Brexit saga is not. There are now numerous factors for trademark owners to bear in mind, with a host of new rules to become accustomed to. 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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3 Dec 2020

EUIPO launches GIview as US association pledges renewed fight against EU's regime

A week after the EUIPO released a new search database for all geographical indications protected at EU level, the Consortium for Common Food Names has laid down the gauntlet by pledging to “stand up to the EU's destructive GI agenda”. Read more

27 Nov 2020

“An indelible milestone”: first ARIPO GI registration is step towards Africa-wide regime

An ARIPO spokesperson says that it will “help promote the branding of African products and help them access the global market”. Read more

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

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

Online

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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

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. 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

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

Portfolio Management

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11 Jan 2021

No love lost in General Court invalidity action based on goodwill in UK unregistered trademark

In these invalidity proceedings against the mark JCE HOTTINGUER based on the unregistered earlier national trademark HOTTINGER, the EU General Court considered the conditions for the application of Article 8(4) of Regulation 207/2009. Read more

7 Jan 2021

Forbo v EUIPO: beware of what you eat before the deadline for filing a brief

The decision of the EU General Court in this highly unusual case could open the door to quasi-abusive requests for restitutio in integrum. Read more

18 Dec 2020

General Court partially annuls Board of Appeal’s decision in 3D champagne trademark case

In opposition proceedings involving 3D marks representing champagne bottles, the General Court has found that the Board of Appeal of the EUIPO had erred in its assessment of the likelihood of confusion between the marks. Read more

17 Dec 2020

General Court confirms likelihood of confusion between MARQ and MARK – but outcome could have been very different

In these invalidity proceedings involving the signs MARQ and MARK, the key issue that could have led to the annulment of the EUIPO’s decision was not raised by the applicant. Read more

Trademark law

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14 Dec 2020

The evolution of EU design law: what you need to know

The review of design law in the EU is a hot topic following last month’s European Commission report. In an exclusive guest post, Andrea Leonelli from Allen & Overy looks at the findings and what could happen next. Read more

12 Dec 2020

EU image rights: when the product is us

In the absence of a harmonised EU law on image rights, individuals are forced to rely on a combination of copyright and human rights claims to protect their most unique asset online – their own image. Read more

10 Dec 2020

Six key practice points for UK practitioners post-Brexit

As the Brexit transitional period comes to an end and the United Kingdom finds itself no longer governed by EU law, local practitioners should be aware of the impact on various aspects of trademark practice. 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