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What you need to know before the controversial Sky v Skykick case hits the CJEU

On Monday, the Court of Justice of the European Union holds a hearing in the closely followed Skykick case. We look at how this case could have a significant impact on trademark practice.

What you need to know before the controversial <em>Sky v Skykick</em> case hits the CJEU
14 May 2019

Brexit Party versus Change UK, Hells Angels victory, and INTA Annual Meeting on the up: news digest

In our latest edition, we look at Guns ‘N’ Roses moving to protect a trademark, Indian farmers prevailing over PepsiCo in a potato legal battle, top Indian brands backing underdogs in Cricket World Cup, and much more.

2 May 2019

Gleissner companies owe 37% of all unpaid costs at UKIPO since 2018, research reveals

Research from WTR finds that entities related to serial trademark filer Michael Gleissner owe costs in nearly 30 separate UK legal cases, accounting for 37% of all unpaid costs at the UK Intellectual Property Office since the start of 2018. 

Latest

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Today

Trump International loses High Court appeal

The High Court has upheld a decision of the UK Intellectual Property Office finding that the application for TRUMP TV, filed by ‘trademark troll’ Michael Gleissner in the name of Trump International Limited, had been made in bad faith. Read more

17 May 2019

GLENFIDDICH v GLENFIELD: battle of the label trademarks

The UK Intellectual Property Office has issued a somewhat unexpected decision in a case involving an application for the label mark GLENFIELD by an India-based drinks company owner, which was opposed by Scotch whisky distiller William Grant & Sons. Read more

14 May 2019

Procedures and strategies for anti-counterfeiting: United Kingdom

While Border Force may seize items suspected of infringing an IP right (including counterfeit, infringing or pirated goods) ex officio, this is quite uncommon (rights holders would still need to submit an ex officio application for action to secure destruction). Border Force will usually seize only such items where a rights holder has a customs application for action in place. Read more

13 May 2019

Brexit and the future of anti-counterfeiting collaboration

Brexit is a difficult road to travel and ensuring continued high levels of enforcement cooperation will prove difficult. Once the United Kingdom withdraws from the European Union, it will effectively become a third country that is unlikely to have direct access to many key databases.  Read more

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Anti-counterfeiting

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3 Apr 2019

 “You can’t sleep or you will fall behind”: exclusive look inside Alibaba’s fight against fakes

We sit down with Alibaba Group’s vice president and head of global intellectual property enforcement, Matthew Bassiur, to discuss Alibaba’s anti-counterfeiting activities and how it changed industry perception of its enforcement efforts. Read more

29 Mar 2019

Change.org responds to The Independent Group new name, IPOS GI registry, and delays at IP Australia: news digest

In our latest round-up, we look at consumers being frustrated by “disjointed” brand experiences, an Oregon-based clothing retailer in a trademark fight against Under Armour, brands in an age of political division, and much more. 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

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

Brand management

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30 Apr 2019

Creating efficiencies in a data-dominated world: inside GSK’s cross-functional IP services division

Sophie Bodet, vice president of legal brand protection and IP services at GSK, tells WTR about how recent collaborations between the patent and brand teams have delivered tangible efficiencies to the wider business – evidencing the return on investment of internal cooperation. 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

13 Mar 2019

Making brand protection more consumer-centric

Online fraudsters, counterfeiters and pirates are becoming more adept at targeting consumers and taking advantage of legitimate brands. If businesses rely on traditional approaches to brand protection in the face of this onslaught, effective brand protection will be extremely difficult to achieve. To put this into perspective, consider the nature and scope of counterfeiting and brand abuse. 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

Enforcement and litigation

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Today

Trump International loses High Court appeal

The High Court has upheld a decision of the UK Intellectual Property Office finding that the application for TRUMP TV, filed by ‘trademark troll’ Michael Gleissner in the name of Trump International Limited, had been made in bad faith. Read more

17 May 2019

GLENFIDDICH v GLENFIELD: battle of the label trademarks

The UK Intellectual Property Office has issued a somewhat unexpected decision in a case involving an application for the label mark GLENFIELD by an India-based drinks company owner, which was opposed by Scotch whisky distiller William Grant & Sons. Read more

14 May 2019

Procedures and strategies for anti-counterfeiting: United Kingdom

While Border Force may seize items suspected of infringing an IP right (including counterfeit, infringing or pirated goods) ex officio, this is quite uncommon (rights holders would still need to submit an ex officio application for action to secure destruction). Border Force will usually seize only such items where a rights holder has a customs application for action in place. Read more

13 May 2019

Brexit and the future of anti-counterfeiting collaboration

Brexit is a difficult road to travel and ensuring continued high levels of enforcement cooperation will prove difficult. Once the United Kingdom withdraws from the European Union, it will effectively become a third country that is unlikely to have direct access to many key databases.  Read more

Goverment/policy

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21 Mar 2019

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.   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

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

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

Law firms

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5 Apr 2019

Modest progress as gender pay gap narrows at UK law firms with highly-rated trademark practices

UK law firms with highly-ranked trademark practices pay women an hourly rate that is, on average, 19.7% lower than male colleagues, a figure that is higher than the UK national average but represents a slight 3.3% improvement on last year. Read more

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

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

IP offices

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24 Apr 2019

IP Australia, EUIPO and UKIPO ranked most effective IP offices

A new survey conducted by WTR has found that IP Australia is the IP office most lauded by trademark practitioners around the world. However, users raised concerns with operations at a number of IP offices. Read more

2 Apr 2019

Cornish Pasty ranked most well-known UK GI product, as associations warn of Brexit risk

A new study has identified the most well-known geographical indication (GI) products in the United Kingdom, with GI association experts concurrently warning of the risks that Brexit poses. Read more

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. Read more

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

Online

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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

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

Portfolio management

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30 Apr 2019

Creating efficiencies in a data-dominated world: inside GSK’s cross-functional IP services division

Sophie Bodet, vice president of legal brand protection and IP services at GSK, tells WTR about how recent collaborations between the patent and brand teams have delivered tangible efficiencies to the wider business – evidencing the return on investment of internal cooperation. 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

24 Apr 2019

Another blow for HBO as opposition against GAME OF VAPES fails

Game of Thrones producer HBO has suffered another defeat before the UK Intellectual Property Office: following on from a decision in which registration of GAME OF STONES was allowed for beer, the office has rejected HBO’s opposition against GAME OF VAPES for tobacco products. Read more

8 Apr 2019

Appointed person serves final decision in tea dispute

A trademark dispute between luxury tea companies Mariage Frères and TWG Tea Company over the mark SAKURA SAKURA! in the United Kingdom has been settled by a decision of the appointed person. Read more

Trademark law

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1 Apr 2019

Trump defeats Gleissner in trademark case; UKIPO warns activity risks bringing entire system into disrepute

A trademark for the term TRUMP TV, owned by “infamous trademark troll” Michael Gleissner, has been rejected. As part of the case, the comptroller general of the UK registry decried Gleissner’s “gaming” of the trademark system. Read more

28 Mar 2019

How Signify’s IP team undertook its global rebrand from Philips Lighting: exclusive interview

Senior IP counsel Joeri Mombers provides a detailed insider’s view of lighting giant Signify's "once in a lifetime" trademark project. Read more

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. Read more

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

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Brexit Party versus Change UK, Hells Angels victory, and INTA Annual Meeting on the up: news digest

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Emre Kerim Yardımcı
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Istanbul, Turkey
Deriş Attorney-At-Law Partnership
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