United Kingdom

Thomas Cook brand relaunched; ‘rip off’ Teddy Fresh clash; Lady A legal fight continues – news digest

In our latest round-up, we look at industry groups teaming up to fight pirates, a call for fake pharmaceutical stories, IP Australia announcing a new indigenous knowledge initiative, and much more.

Thomas Cook brand relaunched; ‘rip off’ Teddy Fresh clash; Lady A legal fight continues – news digest
Live updates: IP offices implement measures in wake of coronavirus crisis
18 Sep 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.

Queen Elizabeth II prevails in trademark dispute; Big Mac versus Big Jack; Kraft Heinz licensing – news digest
4 Sep 2020

Queen Elizabeth II prevails in trademark dispute; Big Mac versus Big Jack; Kraft Heinz licensing – news digest

In our latest round-up, we look at a warning to act on counterfeit goods before it’s too late, Lord & Taylor filing for bankruptcy, IP Australia updating its trademark classifications, and much more.

Latest

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23 Sep 2020

Puma's quest to block Nike's FOOTWARE mark is de-feeted

In a somewhat surprising decision, the UKIPO has rejected Puma SE’s opposition against Nike Innovate CV's application to register the word mark FOOTWARE for various goods and services, including wearable technology. Read more

17 Sep 2020

Dior loses PRETTY SAVAGE trademark dispute in the United Kingdom

Luxury brand Christian Dior has failed to prevent the registration of UK trademark PRETTY SAVAGE, despite claims that the mark would take unfair advantage of – or be detrimental to – its own SAUVAGE mark. Read more

28 Aug 2020

Economies are battered but many major offices set for record trademark numbers

As the data continues to be updated, we are able to get a better understanding of the extent of the coronavirus’ impact on the trademark ecosystem. Read more

28 Aug 2020

No defence for the Land Rover Defender

The UK High Court has dismissed Jaguar Land Rover’s appeal against the refusal of four UK trademark applications to register two Land Rover Defender models as shape marks. Read more

Anti-Counterfeiting

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17 Aug 2020

“There’s no evidence that plain packaging reduces smoking”: exclusive interview with British American Tobacco’s head of trademarks

Roger Evans discusses how the company has developed a unique brand strategy alongside its PRRPs and argues the negative effect plain packaging has for consumers. Read more

14 Aug 2020

Ben & Jerry’s gets political; Brazil to decide on iPhone mark; another Amazon anti-counterfeiting measure – news digest

In our latest round-up, we look at the Saudi Authority for Intellectual Property looking to regulate its IP industry, Instagram’s new Reels brand facing a trademark lawsuit, and much more. Read more

7 Aug 2020

Enforcement data reveals destination shift for counterfeits originating in China

The true scope of the illicit trade of fake goods is hard to define, but analysis by Rouse indicates that Southeast Asia is a fast-rising hotspot. Read more

7 Aug 2020

How should authors utilise trademarks to protect their literary works: the European perspective

In the second of this two-part piece, we speak to legal experts to explore the role that trademarks could play in the fight against book piracy in Europe. Read more

Brand management

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27 Aug 2020

Yaldi IPA? ALD IPA? How BrewDog and Aldi’s battle of wits benefits both brands

BrewDog has announced a new beer, jesting at Aldi's lookalike product range. The resulting twitter badinage goes to show the benefits of avoiding the swift cease-and-desist. Read more

21 Aug 2020

Gymshark: a brand that ticks all the boxes (including trademark strategy)

The UK fitness company has solidified its market presence among the greats with a winning social media strategy, deep commitment to consumers and a forward-thinking approach to trademark protection. Read more

12 Aug 2020

Indie devs and trademarks: exclusive research reveals brand protection issues of independent video games

New research from WTR has analysed the brand protection of some of the most successful independent video games, and found significant gaps that could lead to expensive legal issues. Read more

4 Aug 2020

Royal Family trademark feud; Uganda joins TMclass; counterfeits seized in Zhejiang – news digest

In our latest round-up, we look at how Microsoft’s bid for TikTok is still on the table, Victoria Beckham launching on Tmall Global, Kappa Japan (and associated IP assets) being sold, Monster Energy in a dispute with Bang Energy, and much more. Read more

Enforcement and Litigation

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26 Aug 2020

Sentencing guidelines for the offence of unauthorised use of a trademark under Section 92 – key points highlighted

The proposed guidelines for sentencing individuals and organisations for the unauthorised use of a trademark under Section 92 of the Trademarks Act aim to maintain current practice while promoting greater consistency. Read more

24 Aug 2020

Manchester United v Sega: application to amend particulars to include new Article 10 claim rejected

While this decision of the High Court concerned an application to amend pleadings, the issues raised suggest that the case is likely to consider several points of interest concerning the application of trademark law to the digital economy, and in particular e-gaming. Read more

30 Jul 2020

Manchester United crowned champions of trademarks Premier League; Messi tops player ranking

New research conducted by WTR can once again reveal that Manchester United has the biggest trademark portfolio of any global football club by a wide margin. Read more

30 Jul 2020

Passing-off claim appears more virtual than real in STEALTH case

This decision of the appointed person on appeal from a UKIPO decision highlights the importance of having sufficient evidence of the date of first actionable use in a dispute involving passing off. Read more

Government/Policy

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28 Jul 2020

Brexit: UKIPO launches consultation to protect UK attorneys in change to address rules

The UK Intellectual Property Office has launched a public consultation with regard to a proposed change to its address for service rules, to be implemented once the Brexit transition period ends. Read more

20 Jul 2020

Food and beverage industry the new brand restrictions battleground as calls for action escalate

The food industry is fast becoming the focus of brand restrictions, with new calls for action against unhealthy foods in the United Kingdom and concern over Mexico’s new labelling regime culminating in a missive from INTA last week. Read more

10 Jul 2020

Amazon to list seller names and addresses; Google launches trademark initiative; UK Intellectual Property Office Brexit preparations – news digest

In our latest round-up, we look at Kazakhstan turning to technology to combat counterfeits, Rangers football club refreshing its brand, a Lady A lawsuit, and much more. 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

Law Firms

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17 Jul 2020

UK is battling Brexit negotiations and the coronavirus, but it is still on track for its biggest trademark year yet

The first week of July was the busiest the UKIPO has ever seen, putting to rest any fears that the coronavirus pandemic would have lasting effects on application levels. Read more

8 Jul 2020

Increased need for disability support in IP profession, shows IP Ability survey

Chris Clarke takes a look at the results of IP Ability’s inaugural industry survey and the extent of issues faced by those in the IP profession. Read more

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. 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

IP Offices

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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

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

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

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

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

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

Portfolio Management

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23 Jul 2020

Cross and heart equals likelihood of confusion, according to UKIPO

This decision of the UK Intellectual Property Office underscores that, where figurative marks share some of the same or similar elements, a likelihood of confusion is possible even when the marks contain additional, different device elements. Read more

17 Jul 2020

All possible pronunciations must be taken into account when comparing invented marks

This decision highlights that, when comparing marks which are invented words, it is necessary to consider all possible pronunciations in order to determine the degree of aural similarity. Read more

14 Jul 2020

PlanetArt v Photobox: trademark infringement in smartphone app branding meets the old road block of descriptive terms

In PlanetArt LLC v Photobox Ltd, the High Court of England and Wales has provided a useful analysis of how trademark law should be applied in the context of smartphone applications. Read more

13 Jul 2020

No corks popping for NOSECCO as High Court upholds opposition to its registration for non-alcoholic wines

This decision of the High Court of England and Wales in opposition proceedings involving the mark NOSECCO and the PDO 'Prosecco' is a reminder that an appeal in opposition proceedings is not a re-hearing, but a review of the decision below. Read more

Trademark law

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8 Jul 2020

Mirror image: using UK and US case law to protect publicity rights

The lack of a single, codified body of law to explicitly protect image or publicity rights on either side of the Atlantic means that high-profile individuals must draw from a variety of causes of action and legal tools to protect their interests. Read more

3 Jul 2020

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. 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

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

Find an expert

Lorna Mbatia
Managing Partner
Nairobi, Kenya
CFL Advocates