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Bordeaux wine win in China; USPTO seeks TPAC nominations; Iskcon declared well known – news digest

In our latest round-up, we look at the Qatar versus Saudi Arabia piracy battle escalating, former employees of Hermès appearing in court for counterfeiting, a legal blow for Stan Lee’s daughter, and much more.

21 May 2020

Trademark filing levels recover but long-term picture remains in doubt

After an initial slump in global trademark filing levels in the wake of the coronavirus outbreak, data reveals that numbers have started to return to normal at several major offices.

12 Mar 2020

The most prolific trademark attorney firms in Europe revealed

Data analysis reveals that, amongst representatives, Isabelle Bertaux ranks as the number one trademark filer in the EU, with Novagraaf and Arpe completing the top 3.

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23 Apr 2020

Procedures and strategies for anti-counterfeiting: France

Criminal proceedings are not the most favoured option for IP rights holders, but criminal penalties are usually considered to be more dissuasive for infringers. Read more

17 Mar 2020

Trademark procedures and strategies: France

French trademark law confers no exclusive right to the owner of an unregistered mark. Read more

21 Feb 2020

Football: a game where every brand wins

Football teams and corporates are cashing in on brand value, but a changing industry means clubs need to use new methods to continue strengthening their presence and engagement levels. Read more

14 Jan 2020

Infringement and filings increase but budget no longer the primary concern, says new study

As trademark filing numbers increase globally, a new report by CompuMark provides data on a rise in infringement incidents that trademark professionals are experiencing. While these infringements are costly, budget does not currently top the list of concerns for in-house teams. Read more

Anti-Counterfeiting

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14 May 2019

Procedures and strategies for anti-counterfeiting: France

When the EU Customs Regulation does not apply, rights holders can rely on the national provisions of the French IP Code. The French Customs Code will also apply to Customs and criminal procedures. Read more

23 Apr 2019

Turkey trademark uplift, INPI announces Africa IP adviser, and China counterfeit crackdown: news digest

In our latest edition, we look at INTA and the National Trade Foundation for Education partnering up to spread the anti-counterfeiting message, a study highlights how brands need to showcase their authenticity, and much more. Read more

12 Sep 2018

Trademark procedures and strategies: France

Any natural person or legal entity can apply for a French trademark before the French Institut National de la Propriété Industrielle (INPI). The application can be filed by the owner itself or its representative. Read more

24 May 2018

Role of property owners and governments in mitigating trade in counterfeits

While there are several initiatives in place to assist landlords in fighting counterfeiting, a great deal more can and must be done by landlords, governments, enforcement agencies and rights holders in transforming these efforts into a comprehensive and collective response to this massive problem. Read more

Brand management

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15 Nov 2019

Tiffany’s signature blue is priceless – and LVMH knows it

While the French powerhouse has yet to up its offer, it has come too far to back down. The American jeweller is a highly attractive target for anyone with a stake in the luxury market. Read more

18 Oct 2019

A new dawn for grocery stores: how major brands are changing to counter low-cost rivals

The departure of Tesco’s CEO signifies the retailer’s successful turnaround, but this is just the beginning as long-time players overhaul businesses to stay in the game. Read more

29 Jul 2019

The top filers and a vision for the future: inside EUIPO operations

Less than a year into Christian Archambeau’s tenure as executive director, the EUIPO is laying the groundwork for future expansion. World Trademark Review’s annual focus on the office assesses current operations, reveals the most proactive filers and explores how the agency is taking a global view of trademarks. Read more

26 Apr 2019

Trademark Premier League: Manchester United crowned 2019 champions, as Messi pulls ahead of Neymar

With today’s World Intellectual Property Day celebrating the importance of IP in sports, research conducted by WTR finds that Manchester United has the most significant trademark portfolio of any global football club. Read more

Enforcement and Litigation

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12 Dec 2019

Litigation procedures and strategies: France

18 Apr 2019

Notre Dame misinformation highlights brand protection challenge for media organisations

There have been numerous reports of fake media accounts spreading conspiracy theories around the Notre Dame Cathedral fire. Such activity around major events is a reminder of the significant challenge that IP practitioners face. Read more

4 Apr 2019

Blow for Hyundai as Court of Appeal upholds opposition against KONA mark for automobiles

In a blow to the South Korean multinational automobile manufacturer, the French Court of Appeal has confirmed that there was a likelihood of confusion between Hyundai’s mark KONA for “automobiles” and the earlier mark KONA for “bicycles”. Read more

25 Jan 2019

Litigation procedures and strategies: France

In France, arbitration is available for most trademark litigation. However, arbitration for the validity of a trademark remains uncertain as it may be considered a public policy matter, and there is no case law on this point. Read more

Government/Policy

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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

27 Nov 2019

Trademark changes in France: how tiny details could have huge consequences for brands

Earlier this month, the EU Trademark Directive was implemented in France. In an exclusive guest post, Herald Avocats partner Richard Milchior explains why international brands should be aware of the potential impact of these changes. Read more

28 Feb 2019

An IP awareness revolution

In an exclusive article, the director general of the French National Institute of Industrial Property explains how the office has been creating cutting-edge industrial property awareness programmes across France – and why this is such a priority. Read more

4 Dec 2018

Angola brand deadline looms, France and Peru sign IP action plan, and new Chile trademark guidelines: news round-up

In our latest round-up, we look at the United Kingdom’s IP minister seat being vacant once again, question marks over affiliate links on Instagram, puns being encouraged at the Philippines IP office, and much more. Read more

Law Firms

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7 Sep 2018

The fall of the own-name defence

The ability to raise the own-name defence in Europe is about to come to an end. This article examines the consequences of recent own-name legislative changes for businesses in Europe. Read more

17 Apr 2018

WHOIS access charges, NGOs take aim at watch list plans and INTA applauds ‘Brand India’: news round-up

In our latest round-up, we look at a registry’s plans to charge trademark owners for access to WHOIS data and the war of words over plans for an IP markets watch list. Read more

19 Feb 2018

France’s burgeoning tech sector could overtake UK, but filings remain flat: exclusive data analysis

In this week’s country data report, World Trademark Review inspects the trademark landscape in France. We delve into the country’s filing trends and analyse how its leading brands have performed in recent years.

IP Offices

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2 Oct 2018

“The INPI facilitates the life of companies” – exclusive interview with new director general of French IP office

Pascal Faure, the new director general of INPI, reveals his immediate priorities in the role, including the introduction of new measures that will “strengthen the examination of trademarks” in France. Read more

6 Apr 2018

Trademark offices prepare for the future as users give poor performance grades

The performance levels of the Chinese, Brazilian and Indian trademark offices have clear room for improvement but change could be afoot. Read more

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10 Jul 2019

Highest court ends judicial dispute involving Saône-et-Loire department

The Cour de Cassation – the highest French court – has confirmed the Versailles Court of Appeal decision ordering the transfer of three domain names infringing the trademark of the French department of Saône-et-Loire. Read more

21 Jun 2018

Bitcoin, CNN and Elon Musk under attack: how scammers are stepping up their game

An investigation from World Trademark Review has explored the evolving tactics of misleading and often malicious websites that pose as articles from well-known news outlets, with common trends including the use of cryptocurrency and Elon Musk to lure in users.

16 Feb 2018

Why it is critical to provide sufficient evidence under ADR procedures for '.fr' domain names

In a decision under the Syreli alternative dispute resolution procedure, a college from AFNIC has denied the transfer of a domain name consisting of the name of the complainant under ‘.fr’ due to lack of evidence.

24 Jan 2018

Paris Court of Appeal orders cancellation of FRANCE.COM marks and transfer of 'france.com' domain name

In France.com Inc v Traveland Resorts, the Paris Court of Appeal has ordered the cancellation of trademark registrations for FRANCE.COM, and ordered the transfer of the domain name ‘france.com’ to the French State.

Portfolio Management

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7 Jan 2019

Protecting and enforcing design rights: France

Design protection in France may be claimed through a French design application, an international application designating France or the European Union or a direct Community design application filed with the EU Intellectual Property Office (EUIPO). Read more

13 Mar 2018

Procedures and strategies for pharmaceutical brands: France

In order for a pharmaceutical trademark to be registered, no prior authorisation is needed per se. Unlike in other countries, in France the trademark owner is independent from the party exploiting the trademark and need not possess a particular quality. Read more

11 Dec 2017

Protecting and enforcing design rights: France

29 Mar 2017

Trademark procedures and strategies: France

French trademarks are governed mainly by Law 1991-7, which implements the EU First Trademarks Directive (89/104/EEC) and is codified in the IP Code. The code was amended several times, in particular by Law 2007-1544, which implements the EU IP Rights Enforcement Directive (2004/48/EC).

Trademark law

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21 Sep 2018

UDRP misuse warning, non-traditional tips, and the danger from subtle copies: insights from MARQUES 2018

This week’s MARQUES Annual Conference in Paris draws to a close today. We present some of the key insights from the event, including insight into the standoff around WHOIS data access, the one Brexit-related question you need to be asking, and more. Read more

17 Aug 2018

A-Z guide of EU trademark court practice and performance: Finland to Hungary

In the second 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 last two years. Read more

20 Jul 2018

Well-known marks: approaches to fame in Europe

Obtaining well-known status for a trademark can be a powerful tool for rights holders. In the third of a three part series, this article considers the best route in key European jurisdictions Read more

26 Apr 2018

Law on 2024 Paris Olympics enters into force - what you need to know

Law 2018-202 on the organisation of the 2024 Olympic and Paralympic Games, which will take place in Paris, has come into force. This update sums up the main points of interest with regard to intellectual property.

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09 Jul 2020

@WTRmagazine RT @WebTMS: Do you have a couple of minutes to help @WTRMagazine assess the non-legal trademark services supplier market? Take the quick su… Read more

09 Jul 2020

@WTRmagazine RT @MarksmenTweets: “Encouraging message to #brandowners” – why Under Armour’s victory in China is bad news for #counterfeiters https://t.… Read more

09 Jul 2020

@WTRmagazine Counterfeit hotspots in Madagascar that brand owners must be aware of. https://t.co/ZG6AujqR0h https://t.co/eTqT2zgGN6 Read more

09 Jul 2020

@WTRmagazine New specialised IP courts in Poland should make EU and domestic case law consistent. https://t.co/3LlvBtF8PU https://t.co/W6YEj2CEpy Read more

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Laila dos Reis Araujo

International Department Manager

Sao Paulo, Brazil

Peduti Advogados

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France

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