United Kingdom

European Union to accede to Geneva Act; Brexit uncertainty means United Kingdom poised to become GI battleground

The European Parliament's Legal Affairs Committee has endorsed the European Union acceding to the Geneva Act – a move that could propel the issue of geographical indications back to the top of the trade deal agenda as the United Kingdom looks to its post-Brexit future.  

European Union to accede to Geneva Act; Brexit uncertainty means United Kingdom poised to become GI battleground
13 Mar 2019

Don't panic? What the UK government’s second major Brexit defeat means for trademark owners

UK prime minister Theresa May suffered a second catastrophic defeat in as many months as the House of Commons rejected her Brexit deal last night. We take a look at what this latest development means for trademark owners.

4 Mar 2019

New Brexit guidelines give reassurance to rights holders, but attorneys’ rights remain uncertain

New guidelines reaffirm the UK's commitment to protecting existing EU trademarks and to recognising the priority date of pending European applications. But UK attorneys remain none the wiser about their EUIPO rights of representation.

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20 Mar 2019

Philip Morris protects IQOS with registered Community design

In a powerful blow to a Chinese competitor, Philip Morris has deployed its registered Community design (RCD) in order to block the sale of a heated tobacco device, obtaining interim pan-EU injunctive relief from the UK court. The case shows that, in the right circumstances, an RCD can be used to obtain pan-EU injunctive relief on an urgent basis and is therefore an effective weapon for tackling look-a-like products. Read more

19 Mar 2019

‘Funtime’ is over for Trespass

The Intellectual Property Enterprise Court has held that Luen Fat Metal & Plastic Manufactory Co Limited’s UK and EU trademarks for a series of word marks (FUNTIME, FUN TIME and FUN-TIME) are valid and have been infringed. Read more

28 Feb 2019

How to manage brands at a technology licensing company – exclusive interview with Arm’s David Llewellyn

Arm Holdings’ head of trademarks explains how he made the company’s brand function more visible to colleagues and licensing partners, and why he is a strong advocate of bringing trademark work in-house. Read more

28 Feb 2019

"Bye Bye Bye, Bye Babybel": Sainsbury's obtains cancellation of Babybel red wax mark

Fromageries Bel, the maker of Babybel and owner of a UK trademark consisting of a three-dimensional round wax coating with the colour limited to red, has had its trademark cancelled following a successful invalidation claim filed by Sainsbury’s. Read more

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Anti-counterfeiting

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7 Feb 2019

“The world is becoming an IP believer” – UK tops US Chamber of Commerce global trademark ranking

In a newly-released report, the US Chamber of Commerce has ranked the United States as having the best overall IP protection of 50 leading economies, with the United Kingdom topping the trademark ranking. Read more

29 Jan 2019

Prosecco GI dispute stalls trade deal, Brexit counterfeit fears, and new Benelux director general: news digest

In our latest round-up, we look at Swedish trademark legislation updating to align with the new EU directive, an controversial Oxford University trademark application, counterfeit wine in China, and much more. Read more

29 Jan 2019

WHOIS woes, IP mind maps, and understanding counterfeiters: takeaways on managing trademark assets

Highlights from our Managing Trademark Assets Europe event, wherein senior brand professionals shared insights on budget management, fighting counterfeits with limited resources, and more. Read more

7 Jan 2019

Reports of PIPCU’s demise greatly exaggerated as UKIPO commits to future funding

Over the weekend, a national media outlet reported that plans to fund the City of London Police’s Intellectual Property Crime Unit beyond June 2019 have “fallen through”. However, WTR can reveal that the unit is planning for the future. Read more

Brand management

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1 Feb 2019

Asahi’s acquisition of Fuller’s shows value of brands in overseas expansion

This Japanese company's purchase is only one of a number of deals in the industry, with key players bolstering their premium beer portfolios. Read more

27 Nov 2018

Leicester City scores win against Leeds in trademark dispute, but misfires in bad faith claim

Recent English Premier League champions Leicester City FC has been successful in a trademark opposition against lower league Leeds City FC. Read more

20 Nov 2018

“Whatever Brexit looks like, it’s going to cost businesses money”: exclusive interview with Antony Douglass of Specsavers

Antony Douglass, legal director at Specsavers, sits down with WTR to explain the benefits of in-sourced portfolio management, reflects on Brexit, restricted WHOIS, and much more. Read more

15 Nov 2018

“No clarity on continued rights of representation”: trademark experts have their say on the draft Brexit withdrawal text

While uncertainty over the future of the agreed Brexit withdrawal text remains, the 585-page document provides crucial insight into the planned treatment of intellectual property – including rights of representation, exhaustion and the cost-free cloning of rights. Read more

Enforcement and litigation

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19 Mar 2019

‘Funtime’ is over for Trespass

The Intellectual Property Enterprise Court has held that Luen Fat Metal & Plastic Manufactory Co Limited’s UK and EU trademarks for a series of word marks (FUNTIME, FUN TIME and FUN-TIME) are valid and have been infringed. Read more

28 Feb 2019

"Bye Bye Bye, Bye Babybel": Sainsbury's obtains cancellation of Babybel red wax mark

Fromageries Bel, the maker of Babybel and owner of a UK trademark consisting of a three-dimensional round wax coating with the colour limited to red, has had its trademark cancelled following a successful invalidation claim filed by Sainsbury’s. Read more

19 Feb 2019

RAID case: IPEC considers law relating to "use in the course of trade"

In APT Training & Consultancy Ltd v Birmingham & Solihull Mental Health NHS Trust, the Intellectual Property Enterprise Court has provided a useful reminder of the UK law relating to "use in the course of trade". Read more

8 Feb 2019

Irish Whiskey GI protection, no-deal Brexit anti-counterfeiting “travesty”, and Alibaba and eBay on fakes: news digest

In our latest round-up, we look at Brainbase raising money to bolster its licensing platform, the discovery of fake leukaemia drugs, the EUIPO turning to blockchain to fight counterfeiting, and much more. Read more

Goverment/policy

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13 Nov 2018

Good news on costs but Brexit hearing suggests slow progress on issue of EUIPO representation

In an evidence session focused on UK plans for the treatment of intellectual property post-Brexit, the ‘no cost’ transfer of EU trademark rights to the national register was reconfirmed. However, big questions remain over EUIPO representation and the future GIs regime. Read more

2 Oct 2018

“The EUIPO should lead on enforcement” – trademark community reacts to Archambeau appointment

National IP offices within the European Union, key trademark associations and leading filing law firms in the EU react to the appointment of Christian Archambeau as the new executive director of the EUIPO. Read more

25 Sep 2018

UK confirms post-Brexit trademark plans; ambiguities and uncertainties remain

UK government releases a swathe of technical notices that set out likely scenarios in the event of a ‘no-deal Brexit’. When it comes to trademark and design rights, significant questions remain. Read more

15 Sep 2018

Social media buy-and-sell groups to be targeted in anti-counterfeiting initiative backed by UK government

A new programme has been developed in the UK to create greater awareness amongst the administrators of 'buy-and-sell' social media groups about their legal responsibility to prevent the promotion and sale of counterfeit goods. Read more

Law firms

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23 Jan 2019

You get what you pay for? Variances in law firm hourly rates revealed

New research has revealed the variance in the hourly rates charged by law firm practitioners for trademark-related work in key jurisdictions, with the hourly rate for a partner ranging from $30 to $880. Read more

17 Dec 2018

Building for the future

Trademark practices of the future will be very different to those of today. We take a look at what law firms can – and should – do to ensure that they stay ahead of the game. Read more

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

11 Apr 2018

Advertising Standards Authority ruling could have far-reaching implications for UK trademark law firm marketing

​​​​​​​The UK’s Advertising Standards Authority has ruled that Trade Mark Direct cannot claim to be the country’s ‘leading’ or ‘number one’ trademark firm. The decision could lead to a major shift in how firms market themselves in the UK, claims the company's founder. Read more

IP offices

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25 Feb 2019

UKIPO ranked most accessible IP office platform, as registries urged to improve website usability

New research from WTR has found that the IP offices of the UK, Brazil, Japan and Benelux have the most accessible website platforms for users, including those with motor or vision impairment.  Read more

16 Jan 2019

What the UK government’s Brexit deal defeat means for trademark owners

The UK government suffered a catastrophic defeat on Tuesday night after the House of Commons firmly rejected its Brexit deal. We take a look at what the result means for trademark owners, including a claim that rights holders are “back at square one". Read more

4 Jan 2019

Trolls on the rise, Brexit disruption and China’s domination: data trends of 2018

Having just rung in the new year, it is the perfect time to look at the trends which have characterised the trademark landscape in 2018, and discuss what is to come in 2019. Read more

5 Dec 2018

“A significant blow for Cadbury” – UK Court of Appeal decision puts purple trademark at risk

According to experts, the decision at the UK Court of Appeal leaves Cadbury's purple trademark “vulnerable” and could spur competitor Nestlé to consider options in terms of cancelling the registration. Read more

Online

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18 Jun 2018

UK Supreme Court Cartier judgment: who pays for website blocking orders?

In a blow for rights holders, in Cartier International AG v British Telecommunications Plc the UK Supreme Court has decided that internet service providers should not bear the implementation costs for website blocking orders. Read more

24 May 2018

Platform immunity under the microscope: cooperation is the best way forward

Online operators such as eBay, Facebook, Instagram and Amazon find themselves under the microscope. They have become hugely successful organisations, but their platforms are often misused by those infringing rights or promoting bad locations. Read more

17 Apr 2018

Brexit: impact on UK-based proprietors of ‘.eu’ domain names

UK-based owners of '.eu' domain names should take note of the European Commission’s "Notice to stakeholders: withdrawal of the United Kingdom and EU rules on '.eu' domain names". Read more

22 Mar 2018

Which courts have jurisdiction over claim for online infringement of EUTM? Court of Appeal seeks guidance from ECJ

The Court of Appeal of England and Wales has considered which member state's courts would have jurisdiction to hear a claim for infringement of an EUTM where an online advertisement created in one member state targeted consumers in another. Read more

Portfolio management

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1 Feb 2019

Asahi’s acquisition of Fuller’s shows value of brands in overseas expansion

This Japanese company's purchase is only one of a number of deals in the industry, with key players bolstering their premium beer portfolios. Read more

16 Jan 2019

Sky skewers Samsung in 'Q' case

The UK Intellectual Property Office has upheld an opposition filed by Sky, the owner of a figurative mark intended to be seen as ‘Q’, against the registration by Samsung of a mark representing the letter ‘Q’. Read more

7 Jan 2019

Cadbury’s colour purple mark can’t be split - clarity and precision are the winners in the Court of Appeal

In a significant blow to Cadbury, the Court of Appeal of England and Wales has rejected the confectionary giant’s argument that its trademark registration for the colour purple was actually a series mark which could be split and partially maintained. Read more

27 Nov 2018

Leicester City scores win against Leeds in trademark dispute, but misfires in bad faith claim

Recent English Premier League champions Leicester City FC has been successful in a trademark opposition against lower league Leeds City FC. Read more

Trademark law

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29 Jan 2019

Litigation procedures and strategies: United Kingdom

All parties conducting civil litigation in the United Kingdom should follow the Civil Procedure Rules, which set out how cases should be conducted before and after proceedings have been issued. Read more

15 Jan 2019

Supermac’s trademark victory over McDonald’s is a “warning” to major brands

In a landmark judgment, Irish fast food chain Supermac’s has prevailed in a dispute with McDonald’s over the use of the BIG MAC trademark. Read more

8 Jan 2019

Protecting and enforcing design rights: United Kingdom

There is a clear legal distinction between the ‘monopoly right’ in a registered design and the ‘right to prevent copying’ of an unregistered design. Read more

2 Jan 2019

Brexit in focus: end-of-year review from the UKIPO

While Brexit has been the primary focus of many practitioners in the United Kingdom, the UK Intellectual Property Office witnessed various other changes and developments in 2018. Read more

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Laila dos Reis Araujo
International Department Manager
Sao Paulo, Brazil
Peduti Advogados