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North America

Deep dive into Apple counterfeit fight, Skripal poison pair trademark, and most valuable UK brands: news round-up

In our latest edition, we look at China and Singapore partnering up for an IP initiative, another trademark scam highlighted, a German court dealing a blow to ICANN, and much more.

Deep dive into Apple counterfeit fight, Skripal poison pair trademark, and most valuable UK brands: news round-up
19 Sep 2018

Creative trademark strategies are essential for brands venturing into newly-legalised US marijuana markets

Both Coca-Cola and musician Jimmy Buffett have been linked with marijuana brand partnerships over the past week. Such deals pose significant trademark difficulties, but there may be workaround strategies available. 

18 Sep 2018

Most relevant brands in China, OAPI hosts IP celebration, and Trademark Licensing Protection Act in the spotlight: news round-up

In our latest round-up, we look at the IP office of Chile extending deadlines for Japanese applicants, the WHOIS reform group at loggerheads, Indonesia stepping up anti-piracy efforts, and much more.

Latest

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20 Sep 2018

Tread lightly: tyre company’s use of competitor’s mould is reverse passing off

In a case involving sellers of industrial tyres, the US Court of Appeals for the Ninth Circuit has confirmed that the defendant’s use of a competitor’s tyre mould to make its own tyres created a likelihood of confusion. Read more

18 Sep 2018

Federal Court once again affirms that "use" of a trademark does not require bricks and mortar for non-Canadian businesses  

In Hilton Worldwide v Miller Thomson, the Federal Court of Canada has held that providing “hotel services” does not require a physical hotel in Canada to constitute “use” of a trademark in the country. Read more

17 Sep 2018

Trademark litigation remains flat in 2018 as Central District of California continues to be ‘go-to’ venue

Lex Machina has reported that 2,745 trademark litigation cases have been filed in the US so far this year. Therefore, the projected total for year-end  indicates that filings will remain flat after a near-decade of decline. Read more

14 Sep 2018

“There is no one-size-fits-all approach to enforcement” – exclusive interview with Mars Inc’s Sophie Anger

In an in-depth discussion with Sophie Anger, associate general counsel of marketing properties for the global petcare unit of Mars Incorporated, she offers enforcement tips, explains how efficiency is her guiding principle, and much more. Read more

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Anti-counterfeiting

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12 Sep 2018

Trump administration should take credit for China’s counterfeits crackdown, claims trade association

The Precious Metals Association of North America (PMANA) has lauded the Trump administration in its response to China’s adoption of long-awaited e-commerce legislation.  Read more

7 Sep 2018

Wine Spectator versus Weed Spectator, Trump slams Nike, and an ode to trademark attorneys: news round-up

In our latest round-up, we look at trade associations calling for more clarify over rules of origin, CEO of a US cheese company slamming the EU’s GI regime, how Nike’s new ad campaign may have damaged the brand, and much more. Read more

5 Sep 2018

Promoting global IP enforcement reforms should be a “top trade priority” for the United States: new study

Brands fare worse in countries with weaker IP enforcement regimes, and a new study vindicates US government attempts to pressure nations with poor trademark protection and enforcement mechanisms to provide a better environment for brands. Read more

21 Aug 2018

“Banksy of trademarks” loses Beyoncé opposition, Kuwait online action urged, and The Iso Zone closes: news round-up

In our latest round-up, we look at how urgent action is required for owners of Kuwaiti trademarks, Moutai ending its 17-year bid for the NATIONAL SPIRIT mark, how to create an effective brand name, and much more. Read more

Brand management

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7 Sep 2018

“GDPR has made brand rights enforcement online much more difficult” – exclusive interview with ESPN’s Allison Cantor

World Trademark Review speaks with Allison Cantor, principal counsel at ESPN, about how she balances her role as the company’s sole in-house trademark counsel with her other commitments, the difficulties posed by the implementation of GDPR, and much more. Read more

29 Aug 2018

Canada moves ahead with fluid marks

Major amendments to Canada’s Trademarks Act are set to broaden the ability of brand owners to protect fluid marks, but will also introduce new obstacles to slogans. Read more

26 Aug 2018

Harmonisation in practice: a dialogue about foreign trademarks

Industry experts from the United States, the European Union and China outline the key considerations for those looking to expand their portfolios internationally. Read more

15 Aug 2018

Reputational risks on free speech social network Gab; research reveals scale of brand misuse

Research from World Trademark Review has found that many major brand names have been registered on "free speech social network" Gab, with related pages sometimes featuring homophobic and racist content. Read more

Enforcement and litigation

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20 Sep 2018

Tread lightly: tyre company’s use of competitor’s mould is reverse passing off

In a case involving sellers of industrial tyres, the US Court of Appeals for the Ninth Circuit has confirmed that the defendant’s use of a competitor’s tyre mould to make its own tyres created a likelihood of confusion. Read more

17 Sep 2018

Trademark litigation remains flat in 2018 as Central District of California continues to be ‘go-to’ venue

Lex Machina has reported that 2,745 trademark litigation cases have been filed in the US so far this year. Therefore, the projected total for year-end  indicates that filings will remain flat after a near-decade of decline. Read more

12 Sep 2018

Trademark procedures and strategies: Canada

Unregistered trademarks do not have statutory protection in Canada. The owner of an unregistered mark may enforce its rights, but this necessitates the establishment of a reputation through extensive use of the mark in Canada. Read more

12 Sep 2018

A year in review: key trademark decisions from the federal courts in 2017

Decisions handed down in 2017 scored victories for the First Amendment over trademark rights in two monumental decisions, one by the Supreme Court and the other out of the Ninth Circuit, which may end up in the Supreme Court as early as 2019. Read more

Goverment/policy

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13 Jul 2018

ICE’s anti-counterfeiting efforts highlighted as US politicians call for its abolition

Legislation was tabled yesterday in the US House of Representatives calling for the abolition of the Immigration and Customs Enforcement (ICE). It sparked a reminder on the agency's crucial role in the fight against counterfeit goods. Read more

28 Jun 2018

What next for trademark jurisprudence at the Supreme Court? Experts have their say

​​​​​​​Following news that Justice Anthony Kennedy of the US Supreme Court is to retire and with the prospect of a more right-thinking bench, leading IP attorneys are split over what it means for trademark cases in the future. Read more

28 Jun 2018

Trump administration tariffs “could help legitimise fake goods”: trade associations join up to sound alarm bells

Six major US trade associations have joined forces to send a letter warning that the Trump administration’s recent tariffs place “significant barriers on the fight against harmful fakes” and calls for an urgent rethink. Read more

26 Jun 2018

Riding the tidal wave: USPTO faces 10% rise in trademark applications

With a 10% rise in trademark applications mostly spurred by Chinese filings flooding the USPTO in 2017, questions have been raised about whether the office can cope with this influx – both now and in the future. Read more

Law firms

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27 Jul 2018

Outstanding improvement in aerospace brands despite a fall in application numbers: exclusive data analysis

In our latest data report, we examine the top brands, industry trends, and filing data in the aerospace and defence sector - revealing a marked shift from vehicle-related applications to software and research. Read more

13 Jul 2018

Madrid System fails to have an impact for local filers: an analysis of the Indonesian trademark market

In this country data report, we hone in on the fast-growing Indonesian trademark market, revealing that the country’s recent accession to the Madrid Protocol has had little impact on local filers, while US applicants have been making the most of the new filing option. Read more

29 Jun 2018

How brands should prepare for the big changes coming to Canada’s trademark market: exclusive data analysis

In our latest report, we delve into Canada’s trademark landscape. We examine how a major overhaul of its trademark laws may lead to a clogged up register, take a look at filing and litigation trends, and much more. Read more

22 Jun 2018

Rising sales, healthy filings and new opportunities in the dynamic cosmetics sector: exclusive data analysis

In this week’s industry data report, we provide a rundown of the cosmetics market from a branding perspective. We take a big picture look at sales growth and key trends and reveal that technology trademark filings are on the rise among major brands. Read more

IP offices

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20 Aug 2018

Call for USPTO to “pound its fist more loudly” in efforts to tackle trademark solicitation scams

The USPTO has been urged to form an inter-organisational task force to foster greater cooperation in tackling the problem of trademark solicitation scams – an issue that has been a scourge on the industry for years. Read more

17 Aug 2018

$500 million counterfeit bust, David Beckham leaked logo typo, and another creative cease and desist: news round-up

In our latest round-up, we look at rising trademark applications in Cambodia, how thousands are boycotting brands on Twitter, and much more. Read more

14 Aug 2018

IP Australia wins digital award, Stephen Colbert talks trademarks, and USPTO seeks new judge: news round-up

In our latest round-up, we look at a Minneapolis official who sought registered trademark protection of a blog that criticised her, a Delhi court getting tough on perjury in a trademark case, and much more. Read more

3 Aug 2018

Defunct NFL franchise trademarks, counterfeiters target Kickstarter and Pinduoduo investigated: news round-up

In our latest round-up, we look at how tomato DNA is being used to combat dangerous counterfeits, the Vega+ games console losing branding rights, and much more. Read more

Online

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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. Read more

7 Jun 2018

New EUIPO report charts increasing sophistication and diversification of counterfeiters

The EUIPO has released a new report, compiling research since 2013, to present a comprehensive and updated picture of the scope and impact of IP rights infringement in the European Union. Read more

25 Apr 2018

One month until GDPR deadline: INTA and US government call for urgent rethink over WHOIS approach

With the GDPR enforcement date of May 25 fast approaching, the US government and INTA have expanded on their concerns – with a warning that a WHOIS blackout will result "in a field day for bad actors". Read more

17 Apr 2018

adidas takes anti-counterfeiting fight to Instagram sellers, highlights enforcement challenge faced by brands

adidas and Reebok International have filed a lawsuit against 53 sellers of alleged counterfeit goods on social media sites. For those not yet monitoring the platform, the action provides a reminder that Instagram should be part of your policing strategies. Read more

Portfolio management

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29 Aug 2018

Canada moves ahead with fluid marks

Major amendments to Canada’s Trademarks Act are set to broaden the ability of brand owners to protect fluid marks, but will also introduce new obstacles to slogans. Read more

26 Aug 2018

Harmonisation in practice: a dialogue about foreign trademarks

Industry experts from the United States, the European Union and China outline the key considerations for those looking to expand their portfolios internationally. Read more

9 Aug 2018

“We try to pick our battles carefully”: exclusive interview with AIG’s Shama Elliott

World Trademark Review speaks to Shama Elliott, IP manager at American International Group (AIG), who explains the value non-lawyers can add to trademark departments, sheds light on some of the key challenges facing insurance brands, and more. Read more

1 Aug 2018

Cloudy skies forecast for trademark licensees in the wake of Tempnology

In light of the recent Tempnology decision, parties and their trademark counsel must exercise more caution than ever when drafting trademark licence agreements. Read more

Trademark law

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12 Sep 2018

Trademark procedures and strategies: Canada

Unregistered trademarks do not have statutory protection in Canada. The owner of an unregistered mark may enforce its rights, but this necessitates the establishment of a reputation through extensive use of the mark in Canada. Read more

12 Sep 2018

A year in review: key trademark decisions from the federal courts in 2017

Decisions handed down in 2017 scored victories for the First Amendment over trademark rights in two monumental decisions, one by the Supreme Court and the other out of the Ninth Circuit, which may end up in the Supreme Court as early as 2019. Read more

11 Sep 2018

More #MeToo trademark applications, USPTO scandalous marks fight, and FIFA thanks Rospatent for World Cup help: news round-up

In our latest round-up, we look at more trademark applications related to the #MeToo movement, the Swedish IP Office warning against fake election posters, a US court having its say on trademark bullying, and much more. Read more

11 Sep 2018

Trademark procedures and strategies: United States

Trademark enforcement in the United States can be expensive and time consuming. As a result, trademark owners often enforce their trademark rights through informal means, such as cease and desist letters and negotiated settlements. Read more

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“There is no one-size-fits-all approach to enforcement” – exclusive interview with Mars Inc’s Sophie Anger

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“GDPR has made brand rights enforcement online much more difficult” – exclusive interview with ESPN’s Allison Cantor

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Trademark litigation remains flat in 2018 as Central District of California continues to be ‘go-to’ venue

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Promoting global IP enforcement reforms should be a “top trade priority” for the United States: new study

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Nike in political firestorm, Lego blocks Chinese infringer, and Ghana steps up fight against fakes: news round-up

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Tread lightly: tyre company’s use of competitor’s mould is reverse passing off

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Federal Court once again affirms that "use" of a trademark does not require bricks and mortar for non-Canadian businesses  

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Trademark litigation remains flat in 2018 as Central District of California continues to be ‘go-to’ venue

4

“There is no one-size-fits-all approach to enforcement” – exclusive interview with Mars Inc’s Sophie Anger

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Ying Huang
Trademark Agent
Beijing, China
Unitalen Attorneys at Law
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