United Kingdom

Amending the Lanham Act, protecting Lamborghini in Brazil, and "a factory of ideas": news digest 

In our latest edition, we look at Michael Kors launching a digital store on Alibaba’s Tmall, INTA's call for the Lanham Act to be amended, an illicit trade report from TRACEIT, China’s IP transformation, and much more.

Amending the Lanham Act, protecting Lamborghini in Brazil, and
19 Jul 2019

Brexit preparedness, diversity recognition and rising demand: takeaways from the UKIPO’s Annual Report

The UK Intellectual Property Office has published its latest annual report, covering the period from 1 April 2018 to 31 March 2019. We have combed through the 100-page report to bring you our five key takeaways.

18 Jul 2019

Lessons from the high-profile spat between Haas F1 and Rich Energy

When Haas F1 entered the 2019 Formula 1 season, it brought with it a brand new title sponsor, with a colour scheme on its livery to match. However, the relationship has resulted in Twitter rants, leaked documents and legal action – as well as takeaways for trademark professionals.

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19 Jul 2019

“Juul be sorry”: failure to assign domain name results in contempt of court

The decision of the High Court of England and Wales in Juul Labs Inc v Quickjuul Ltd provides a rare example of a civil court imposing penal sanctions for contempt of court. Read more

16 Jul 2019

Diversity in the legal workplace: interview with the global chair of A&O’s LGBT+ network

This week, Stonewall, an LGBT+ rights charity, named Allen & Overy one of its Top Global Employers. WTR sat down with Jim Ford, chair of the firms A&Out network, to discuss the importance of LGBT+ diversity and inclusion in law firms. Read more

16 Jul 2019

Yosemite settles, UKIPO needs your help, and Huawei seeks harmony: news digest

In our latest edition, we look at a reminder of the medical risks of counterfeits in Hong Kong, a car air freshener brand taking Ryanair to court, Monaco now using the TMclass list, applications up in Bhutan, and much more. Read more

16 Jul 2019

Court of Appeal partially overturns High Court in advertising passing-off case

A recent decision of the Court of Appeal of England and Wales highlights that the One in a Million case does not provide a remedy against cybersquatting per se: claimants must still demonstrate goodwill or reputation in the mark contained in the domain name. Read more

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Anti-counterfeiting

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12 Jun 2019

Brand Protection Online: leading industry experts to gather in London

WTR is pleased to announce that our Brand Protection Online event is heading to London in October. As such, the full programme can now be revealed. 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

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

Brand management

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15 Jul 2019

Brand Protection Online Europe: Coty, Maus Freres and Superdry professionals among first speakers revealed

WTR announces the first speakers for Brand Protection Online Europe, taking place in London on 14 October 2019. Among the first names revealed are trademark experts from Alibaba, BP, Tonino Lamborghini, and more. Read more

7 Jul 2019

Monzo doubles value; fintech companies maturing to further disrupt the market

Digital banking giant Monzo announced last month it will be launching in the United States. While this is a significant move for the fledgling company, its trademark portfolio shows it is still well in the start-up phase. Read more

5 Jul 2019

Daniel Wellington keeps a minimalistic portfolio to focus on a bulletproof enforcement strategy

With its origins in Instagram, Swedish watch company Daniel Wellington is no stranger to online counterfeit issues. The IP team’s core activity lies in enforcement, working both offline and online to purge fake goods. Read more

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

Enforcement and litigation

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19 Jul 2019

“Juul be sorry”: failure to assign domain name results in contempt of court

The decision of the High Court of England and Wales in Juul Labs Inc v Quickjuul Ltd provides a rare example of a civil court imposing penal sanctions for contempt of court. Read more

16 Jul 2019

Yosemite settles, UKIPO needs your help, and Huawei seeks harmony: news digest

In our latest edition, we look at a reminder of the medical risks of counterfeits in Hong Kong, a car air freshener brand taking Ryanair to court, Monaco now using the TMclass list, applications up in Bhutan, and much more. Read more

16 Jul 2019

Court of Appeal partially overturns High Court in advertising passing-off case

A recent decision of the Court of Appeal of England and Wales highlights that the One in a Million case does not provide a remedy against cybersquatting per se: claimants must still demonstrate goodwill or reputation in the mark contained in the domain name. Read more

12 Jul 2019

FWD VIEW mark sent back to hearing officer

A recent decision of the appointed person serves as a reminder that, while there is a desire for procedural economy in trademark proceedings, taking such measures, if not done correctly, can cause significant delays.   Read more

Goverment/policy

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8 Jul 2019

UK trademark attorney salaries continue to rise despite Brexit uncertainty

Research reveals that base salaries have risen across the board for UK IP roles. The news will be positively received by those toiling in the trademark trenches while bracing themselves for the possible negative economic impact of Brexit.  Read more

5 Jun 2019

Plain packaging threat rises as UK body recommends regime for confectionery and sugary drinks

The Institute for Public Policy Research has recommended that plain packaging be extended to confectionery, crisps and high-sugar drinks. Now is the time for the trademark voice to be heard. Read more

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

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

Law firms

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15 Jul 2019

Reports of law firm phishing attacks serve as reminder of never-ending threat

Recent reports have put a spotlight on phishing directed at law firms and solicitors. While not a new phenomenon, the coverage highlights a significant problem that is not going away, and one that firms must be quick to tackle. Read more

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

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

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

IP offices

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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.  Read more

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

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

Online

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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

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

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

Portfolio management

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8 Jul 2019

No go for GO-KIDZ mark

The appointed person has upheld a UKIPO decision finding that there was a likelihood of confusion between GO-KIDZ in Classes 3, 5, 10 and 21 and earlier GO marks in Classes 5 and 21. Read more

7 Jul 2019

Monzo doubles value; fintech companies maturing to further disrupt the market

Digital banking giant Monzo announced last month it will be launching in the United States. While this is a significant move for the fledgling company, its trademark portfolio shows it is still well in the start-up phase. Read more

28 Jun 2019

“Hit the road, Jac”, says the appointed person

In a blow to multinational hospitality company Marriott Worldwide Corporation, the appointed person has confirmed that there was no likelihood of confusion between JACHOTELS and Marriott’s earlier marks AC HOTELS and AC HOTEL. Read more

24 May 2019

Appointed person cuts tailor down to size

The appointed person has put an end to a trademark dispute between Tailor & Cutter (Cambridge) Limited, a bespoke tailor based in England, and multinational retail corporation Walmart Apollo LLC. Read more

Trademark law

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28 May 2019

Battle for the BITCOIN mark, China moves closer to Hague accession, and curry conundrum: news digest

In our latest news digest, we look at the $110 million sale of Sports Illustrated’s intellectual property, the expansion of visual search in TMView, a dispute over a curry-related trademark, and much more. Read more

24 May 2019

Elder Scrolls dispute resolved, new UGG litigation launched, and Hogan Lovells tie-up: news digest

In our latest edition, we look at a strategic partnership between Hogan Lovells and Anaqua, Elder Scrolls settling its video game trademark dispute, Siegel+Gale announcing their new head of strategy, and much more. Read more

16 May 2019

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. Read more

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. Read more

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