United Kingdom

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.

<em>Sky v SkyKick</em>: permission to appeal keeps long-running trademark battle raging on
Live updates: IP offices implement measures in wake of coronavirus crisis
2 Jul 2020

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.

Four key areas of investment for effective portfolio management
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.

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3 Jul 2020

Just desserts for MR. WHIPPY on appeal

This decision in UK opposition proceedings suggests that genuine use may be found where the evidence relates to a precursor of the goods covered by the specification, rather than the goods themselves. Read more

2 Jul 2020

UKIPO clarifies goodwill requirement for passing off in RECUP opposition appeal

An appeal concerning applications for various RECUP marks has overturned the first-instance ruling, finding that there had not been sufficient goodwill at the time to support a claim for passing off and that the opposition should not have succeeded. Read more

26 Jun 2020

Merck v Merck: infringements in the digital age

The High Court has brought an end - for now - to the long-running trademark dispute between Merck KGaA and Merck Sharp & Dohme. Read more

25 Jun 2020

No special test for short marks, says the appointed person

This decision highlights that all marks, irrespective of their number of letters, are subject to the well-established principles for the assessment of the visual, aural and conceptual similarities. Read more

Anti-Counterfeiting

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23 Apr 2020

Procedures and strategies for anti-counterfeiting: United Kingdom

Section 89 of the Trademarks Act allows the owner or licensee of a registered trademark to give written notice to HMRC that a consignment of goods is expected to arrive in the UK that will infringe the registered trademark. Read more

17 Apr 2020

Apple most imitated phishing brand; Hugo Boss rebrands to Joe Lycett; new CITMA president – news digest

In our latest edition, we look at Patagonia dropping a trademark suit against OC Media, infringers piling on covid-19 domains, IP issues relating to 3D printing ventilators, and much more. Read more

16 Apr 2020

Lockdown enforcement: how private investigators can help brands during the coronavirus outbreak

A look at how private detectives are continuing their work during government-ordered lockdowns, and how to ensure that anti-counterfeiting and other brand infringement operations are a success during the ongoing coronavirus emergency. Read more

13 Apr 2020

Emotional brand attachment is key to minimising counterfeits, research finds

A new study has found that some of the most common marketing methods have a significant effect on triggering or encouraging trade in branded fake goods. Read more

Brand management

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17 Jun 2020

UK businessman withdraws trademark applications related to Black Lives Matter following backlash

Georgios Demetriou drops efforts to attain registered trademark protection in terms related to the Black Lives Matter movement following claims that his business had been the subject of threats. Read more

12 Jun 2020

Liberty Legal Firm returns; Captain Tom trademarks; GEORGE FLOYD application at USPTO – news digest

In our latest edition, we look at the CJEU ruling that a functional shape can be protected as copyright; the EUIPO looking for pro bono help; Red Points opening a new office in Beijing, and much more. Read more

26 May 2020

Manchester United targets Football Manager; Alibaba cooperation call; new gTLD use rising – news digest

In our latest edition, we look at China hitting back at covid-19 infringers, Off-White continuing to seek a red zip-tie trademark, IP complaints going digital in Bahrain, and much more. 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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19 Jun 2020

JUNGLE GRILL trademark application goes down in flames on appeal

A decision of the appointed person on appeal from a successful opposition to a UK trademark application highlights that additional elements in a mark may not be sufficient to avoid a likelihood of indirect confusion. Read more

12 Jun 2020

British American Tobacco’s application for PODS not stubbed out on appeal

In opposition proceedings against British American Tobacco’s application for PODS in Class 34, the appointed person has remitted the matter to the UKIPO insofar as it relates to the issue of whether “e-cigarettes” are a sub-category of “cigarettes”. Read more

5 Jun 2020

Gabrielle is not Chanel's, according to the appointed person

In a blow to Chanel Limited, the appointed person has dismissed an appeal against a partially successful opposition to a UK trademark application for the mark CHANEL'S GABRIELLE. Read more

1 Jun 2020

Appointed person does not accommodate application for HH HOTELS

Thomas Mitcheson QC, sitting as an appointed person, has dismissed an appeal against a successful opposition to a UK trademark application for the mark HH HOTELS based on the earlier mark NH HOTELS. Read more

Government/Policy

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9 Jun 2020

BLACK LIVES MATTER and I CAN'T BREATHE trademarks filed: Manchester businessman plans charitable foundation

Entrepreneur tells WTR of plan to launch non-profit to help disadvantaged children – and, if the BLACK LIVES MATTER and I CAN’T BREATHE marks are granted, will seek a royalty fee from other entities that use the terms in the United Kingdom. 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

29 Apr 2020

“Brexit hasn’t been forgotten”: exclusive interview with newly elected CITMA president

We sat down with Richard Goddard to discuss the organisation’s strategic direction for his two-year tenure, the spectre of Brexit and how the institute is adapting to current conditions. Read more

17 Apr 2020

Countering the inevitable flood of covid-19 trademark applications

Trademark offices around the world have seen a spate of applications for terms related to covid-19 and the coronavirus. Read more

Law Firms

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26 May 2020

“The heresy I am happy to question”: Trademark Owners Association's managing director outlines plans for legal services brand

WTR sat down with the managing director of the Trademark Owners Association, to get more on the decision to revive the TMOA brand and what the future holds Read more

4 May 2020

Looking after firm mental health during covid-19

LawCare's Elizabeth Rimmer and Dentons' Karina Furga-Dąbrowska discuss the impact of the pandemic on people’s wellbeing and how firms should respond. Read more

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. Read more

6 Mar 2020

Daren Tang and US react to WIPO win; Cypriot Halloumi victorious; Virginia is non-lactose milk intolerant – news digest

In our latest roundup, we look at a Chinese event promising to keep to its June date, Brooks Brothers continued trademark spat, Hugo Boss’s reply to Hugo Boss, and much more. Read more

IP Offices

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27 May 2020

Trademarks rocket while designs level off: UKIPO releases latest annual filings data

The UKIPO has published its annual Facts and Figures Report. We drill down into the data to reveal the most notable findings. Read 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. Read more

28 Feb 2020

Best response to a trademark invoice scam; new UK IP minister; crackdown on coronavirus applications – news digest

In our latest round-up, we look at how there has been a significant trademark filings drop from China to the US, how UK politicians continue to use major brands on social media, and much more. Read more

24 Feb 2020

The end of Sussex Royal: lessons from Meghan and Harry’s trademark trouble

As the Duke and Duchess of Sussex announce that they have withdrawn their SUSSEX ROYAL trademark applications, we look at the lessons that IP owners can take from the long-running saga. Read more

Online

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14 May 2020

Nominet suspends over 180 ‘.uk’ covid-19-related domain names

The covid-19 pandemic is increasing the risk of phishing attacks, as larger numbers of people are using the Internet due to confinement and searching online for information concerning covid-19. Read more

15 Apr 2020

Nominet to introduce law enforcement landing pages

Nominet, the ‘.uk’ domain name registry, has announced that it plans to introduce law enforcement landing pages for domains suspended due to criminal activity. Read more

27 Mar 2020

easyGroup v Easyfly: relationship between jurisdiction and targeting in online trademark infringement

In easyGroup Ltd v Easyfly SA, the High Court has provided a helpful summary of the relationship between jurisdiction and targeting in online trademark infringements following claims of infringement, passing off and conspiracy brought by easyGroup against Colombian airline Easyfly. Read more

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

Portfolio Management

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22 May 2020

YORKSHIRE GOLD for e-liquids vaporised by appointed person

This case highlights an emerging issue for well-known food and confectionery brands, which may find themselves in trademark disputes with e-liquid companies in the future. Read more

18 May 2020

What to consider before bidding in a trademark auction

With a recession looming over global markets, trademark auctions may become more prevalent. WTR speaks to experts on what due diligence these auctions require. Read more

12 May 2020

High Court delivers anticipated Sky v SkyKick judgment

The long-awaited decision of the High Court of England and Wales in Sky v SkyKick should come as a relief for brand owners with broadly-filed specifications. Read more

5 May 2020

SUPERMAC'S v SUPERMAX: the perils of relying on pending rights in oppositions

In an interim decision, the UK Intellectual Property Office has upheld Supermac's opposition against the registration of SUPERMAX for the majority of services covered by the application. The decision will be confirmed only if Supermac's EUTM applications for SUPERMAC'S are registered. Read more

Trademark law

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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

17 Mar 2020

Trademark procedures and strategies: United Kingdom

The United Kingdom left the European Union on 31 January 2020, triggering a transition period until (at least) 31 December 2020. During this period, the United Kingdom will continue to follow EU rules and regulations Read more

24 Jan 2020

Not blocked – Meghan, Harry and a tale of trademark misreporting

As four more notices of threatened opposition are filed, the trademark activity of Prince Harry and Meghan Markle continues to pique the interest of the mainstream media. What has been particularly troubling is the significant inaccuracies in much of the coverage. Read more

23 Jan 2020

Sussex Royal trademark challenged: Prince Harry and Meghan Markle face legal battle after receiving threat of opposition

A trademark application filed by the Foundation of the Duke and Duchess of Sussex for the brand name 'Sussex Royal' has received a notice of threatened opposition this week, WTR can reveal. Read more

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