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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.

30 Mar 2020

Coronavirus and fakes: brand owners warned of stark rise in online counterfeits and fraudulent ads

New research has found a huge increase in use of social media platforms in recent weeks, with further findings revealing that counterfeiters are taking advantage of the covid-19 crisis.

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.

Latest

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30 Mar 2020

UK Patent Attorney Firm of the Year: Kilburn & Strode LLP

30 Mar 2020

UK Trademark Firm of the Year: Stobbs IP Limited

30 Mar 2020

UK Patent Law Firm of the Year: Powell Gilbert

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

Anti-Counterfeiting

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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

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

21 Feb 2020

Football: a game where every brand wins

Football teams and corporates are cashing in on brand value, but a changing industry means clubs need to use new methods to continue strengthening their presence and engagement levels. Read more

29 Jan 2020

Improving diversity; managing the bullying narrative; wielding enforcement data – takeaways on trademark management

Senior in-house and law firm brand professionals convened in London this week for our latest Managing Trademark Assets Europe event. Here we present a selection of highlights from the day's sessions. Read more

Brand management

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2 Mar 2020

Comedian legally changes name to Hugo Boss – important lessons for brands

UK comedian Joe Lycett has legally changed his name to Hugo Boss in protest at the fashion company’s trademark enforcement work in a move that provides crucial lessons for all trademark professionals. 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

19 Feb 2020

Sussex Royal brand: Prince Harry and Meghan Markle trademark registration in doubt as Queen intervenes

The saga of the trademark activities of Prince Harry and Meghan Markle continues, with reports that the Queen has “banned” use of the Sussex Royal brand. WTR talks to an IP expert on the implications of this development. Read more

Enforcement and Litigation

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25 Mar 2020

Protected designation of origin: Nosecco evokes Prosecco

The decision of the UK Intellectual Property Office in opposition proceedings against a mark containing the word ‘Nosecco’ shows that protected designations of origin can benefit from a lower hurdle of evocation when compared with likelihood of confusion. Read more

19 Mar 2020

High Court confirms that BIG HORN marks infringe Red Bull’s EU trademarks

The High Court of England and Wales has confirmed that Big Horn’s marks, which consist of a ‘double ram’ device with the words ‘Big Horn’, infringed energy drink giant Red Bull’s EU trademarks. Read more

17 Mar 2020

LOCH NESS TONIC case: appointed person decision provides no tonic to appellant

This case highlights the importance of assessing whether it is appropriate to appeal against a UKIPO decision if the appeal relies on arguments that contradict those with which the hearing officer agreed at first instance. Read more

12 Mar 2020

Court of Appeal confirms that low-quality packaging is a legitimate reason to oppose further exploitation of luxury branded goods

In Brealey v Nomination Di Antonio E Paolo, the Court of Appeal of England and Wales has confirmed that jewellery company Nomination was entitled to oppose the further commercialisation of its bracelet links by JSC Jewellery. Read more

Government/Policy

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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

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

23 Jan 2020

A third of companies admit uncertainty over post-Brexit trademark strategy

A new study has revealed that a third of UK and European businesses remain uncertain of what their trademark registration strategy will be after the UK leaves the European Union. Read more

21 Jan 2020

Brands warned of ‘Greta effect’, fake kilt accessories, and caution over copycat retail sites: news digest

In our latest edition, we look at a mass counterfeit haul in North Carolina, Mayfair Platinum defending its trademark use, a law firm appointing its first CEO, and more. Read more

Law Firms

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24 Feb 2020

Five practical steps to improve wellbeing in the workplace

Whether working in the corporate or law firm environment, trademark practice leaders should ensure that they have a coherent wellbeing strategy in place. Read more

28 Jan 2020

How mental health awareness initiatives are changing the legal workplace

As firms become wise to the drastic toll that poor mental health takes on the legal workforce, what are they doing to tackle the problem directly? WTR looks at EIP's mental health first-aider scheme and catches up with Dentons' chief mindfulness officer. Read more

17 Jan 2020

KIPO urges idol IP protection, Extinction Rebellion brand headache, and CCFN praises US-China deal: news digest

In our latest round-up, we look at a Love Island star being reprimanded due to an Instagram post, the theme for World IP Day 2020, the Chilean IP office being praised for a reduction in the gender gap, and much more. Read more

8 Jan 2020

Tackling the stigma of disability in intellectual property: interview with IP Ability co-chairs

WTR speaks to Marianne Privett and Francesca Rivers, the co-chairs of IP Ability, a new community attempting to address diversity and inclusion challenges for neurodiverse and physically disabled IP professionals. Read more

IP Offices

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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

21 Jan 2020

Sussex Royal trademark: Meghan and Harry in strong legal position to protect their brand

Question marks have arisen over Prince Harry and Meghan Markle's use of 'Sussex Royal'. Talking to WTR, trademark experts claim that, when it comes to obtaining registered trademark protection, their position appears to be strong. Read more

10 Dec 2019

Baby Yoda IP protection, wilful counterfeit purchasing, and Fashion Week legal battle intensifies: news digest

In our latest round-up, we look at a law firm launching a new trademark monitoring tool, some of the brand protection trends to expect in 2020, how Chinese trademark applications are on the rise in Canada, and much more. Read more

29 Nov 2019

DPMA warns of scam invoices, Poundland versus Greggs, and WIPO DG candidate list widens: news digest

In our latest round-up, we look at the Philippines IP Office reviving its arbitration service, the advocate general finding that Amazon didn’t infringe on Coty’s trademark rights, the first GIs being processed in Ivory Coast, and much more. Read more

Online

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2 Jan 2020

#FairUse? Third-party trademarks in social media hashtags

European and US case law suggests that there are very few situations in which use of a third party’s trademark in a hashtag is permissible. As a result, those looking to advertise on social media need to be aware of the strict rules that apply. Read more

22 Oct 2019

Call for Google to step up de-indexing as study reveals prevalence of counterfeits in search results

A new study from Incopro has revealed the regularity of sites selling counterfeits being included in Google search results. The company is now calling on the search engine giant to comply with de-indexing requests for such sites. Read more

15 Oct 2019

Alibaba commended, PIPCU needs you, RPMs review update: takeaways from Brand Protection Online Europe

WTR held its inaugural Brand Protection Online Europe in London yesterday, which featured speakers from brands including Alibaba, PayPal, Superdry and Tommy Hilfiger. We share a variety of takeaways from the day. Read more

6 Sep 2019

KFC dragged into UK politics, identifying a trademark bully, and EUIPO on long applications: news digest

In our latest round-up, we look at the CEO of WeWork returning a “trademark payment” to the company, Ariana Grande suing Forever 21, debate over dropping word marks, and much more. Read more

Portfolio Management

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3 Mar 2020

Appointed person not convinced by opponent’s woolly arguments in MERINO case

A recent decision by Iain Purvis QC, sitting as an appointed person, suggests that a term which is common in some forms of trade may still be registrable in combination with other words. Read more

24 Feb 2020

SkyKick - what, if anything, will change? A UK perspective

Will there be any change, either in terms of filing strategies or in terms of the practical guidance provided by the UK courts and Intellectual Property Office, following the judgment of the Court of Justice of the European Union in Sky v SkyKick? Read more

20 Feb 2020

A tiff over lashes - UKIPO refuses registration of COTSWOLD LASHES BY TIFFANY on basis of likelihood of confusion

The UK Intellectual Property Office has upheld US jewellery giant Tiffany & Co’s opposition against the registration of COTSWOLD LASHES BY TIFFANY by the owner of a small UK-based business. Read more

29 Jan 2020

No luck for Cambridge University’s challenge against CAMBRIDGE NEUROTECH

The appointed person has dismissed the University of Cambridge’s appeal against a UKIPO decision allowing an application for the figurative mark CAMBRIDGE NEUROTECH in Class 9. Read more

Trademark law

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21 Jan 2020

“UK will become paradise for free riders”: CJEU referral highlights potential Brexit IP schism

Four questions have been referred to the CJEU which could lead to a landmark judgement on a trademark owners’ rights to stop resales. The decision may further enlarge the gulf between the UK and the EU's position on exhaustion post-Brexit. Read more

10 Dec 2019

Frozen 2 versus Christian Louboutin: could Anna’s red-soled shoes lead to a trademark dispute?

In Disney's Frozen 2, main character Anna is seen wearing red-bottomed boots, with some claiming a similarity to the iconic footwear of fashion brand Christian Louboutin. We speak with IP experts on the issues potentially at play. Read more

9 Dec 2019

Litigation procedures and strategies: United Kingdom

22 Nov 2019

Michael Gleissner versus Apple and Samsung: millionaire defeated in Benelux and UK

Two recent trademark cases in Benelux and the UK have landed significant blows to notorious millionaire Michael Gleissner’s unprecedented trademark activity. According to one expert, they clearly demonstrate that IP offices are “not a playground for vexatious parties”. Read more

Twitter

01 Apr 2020

@WTRmagazine RT @trevorclittle: The WTR Industry Awards shortlist has just been revealed. It is a reminder that, during these difficult times, companies… Read more

01 Apr 2020

@WTRmagazine WTR Industry Awards: the 2020 shortlisted teams and individuals unveiled. https://t.co/oWePT8TqZu #WTRAwards https://t.co/tFoAaElMHe Read more

01 Apr 2020

@WTRmagazine RT @techsonIP: Covid-19 emergency means the work of trademark counsel is more important than ever https://t.co/AEUHSCT8Xo Read more

01 Apr 2020

@WTRmagazine RT @MarksmenTweets: The CARES Act and the #USPTO: assessing the potential impact of the act’s provisions https://t.co/zlRIFDnNwf by @WTRMa… Read more

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John Cotter

Partner

Toronto ON, Canada

Osler, Hoskin & Harcourt LLP

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