United Kingdom

UK election: parties silent on brand protection issues as campaigns focus on Brexit

Major UK political parties are sharing their policy platforms in the hopes of attracting the British electorate’s vote. However, when asked by WTR about their stance on various brand protection issues, most parties are silent.

UK election: parties silent on brand protection issues as campaigns focus on Brexit
20 Nov 2019

Chelsea still owns José Mourinho trademarks; will Tottenham have to pay to commercialise his name?

Tottenham Hotspur has appointed José Mourinho as its new manager, and questions have arisen about trademarks owned by rival club Chelsea. Talking to WTR, one IP expert points to “potential” for issues between the two clubs.

19 Nov 2019

Russia and Syria IP cooperation, Alibaba and JD.com spat, and OK BOOMER trademarks: news digest

In our latest news round-up, we look at the Chile IP office urging electronic usage following mailbox damage, a St Andrews trademark dispute heating up, an update on the Bentley case, Ecuador joining DesignView, and much more.

Latest

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Today

LIVINGDREAMS mark put to bed on appeal

The appointed person has upheld a decision of the UKIPO finding that there was a likelihood of confusion between the figurative mark LIVINGDREAMS in Class 20 and earlier marks consisting of, or containing, the word ‘dreams’ in Classes 20, 24 and 35. Read more

19 Nov 2019

“There’s a lot of suffering out there” – leading academic warns of the legal profession’s mental health problem

Richard Collier, a professor of law and social theory at Newcastle University, tells WTR why he is concerned for the mental health of a generation of lawyers, and what the industry can do to effectively improve employee wellbeing. Read more

19 Nov 2019

Bent(ley) out of shape in trademark dispute

In Bentley 1962 Ltd v Bentley Motors Ltd, the High Court of England and Wales has found that Bentley Motors, the well-known manufacturer of luxury vehicles, had infringed trademarks belonging to a small UK-based clothing company.  Read more

6 Nov 2019

Risqué business: lessons from the Unilever and Kraft Heinz Pornhub advertising backlash

Kraft Heinz and Unilever have distanced themselves from a pornography website on which they advertised, following accusations that it hosted underage and illegal content. Legal experts emphasise the importance of being involved in conversations over brand messaging and positioning. Read more

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Anti-counterfeiting

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1 Nov 2019

Plain packaging fireworks, Facebook fishing for phishers, and Irish Whiskey in Taiwan: news digest

In our latest round-up, we look at Mauritius considering introducing the international exhaustion of trademark rights, 6,000 counterfeit products seized in China, Conor McGregor’s latest trademark fight, and much more. Read more

29 Oct 2019

UKIPO postpones Brexit work, Canada plain packaging and KIPO warns of trademark squatters: news digest

In our latest round-up, we look at INTA bringing the Unreal Campaign to Lima, the UAE IP office forgoing certain fees, Stan Lee’s daughter suing POW! Entertainment, and much more. 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

1 Oct 2019

“Governments should regulate, not obliterate, brands” – plain packaging could cause $430 billion loss for beverage industry

Research estimates that the extension of plain packaging to alcohol and sugary drinks would result in a massive loss for the global beverage industry. Read more

Brand management

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4 Nov 2019

Chinese company to acquire Thomas Cook brand and appears to have grabbed a bargain

In our latest opinion piece, we consider the news that Fosun Tourism Group is purchasing the Thomas Cook brand, recently valued at £836 million, in a deal worth £11 million – arguing that the company is making a canny acquisition. Read more

25 Oct 2019

Diageo puts brand building at the core of its business – and it works

The British multinational sees success because it never guesses about consumer needs and invests in targeted marketing. Read more

11 Oct 2019

Online betting heats up in the US with string of M&A activity

Flutter Entertainment’s acquisition of The Stars Group would show that, despite uncertainty, major players in the gambling industry see the newly liberated US as a high-growth market. Read more

2 Oct 2019

“A frankly pointless step” – why Banksy pop-up shop could hinder trademark case

Anonymous street artist Banksy has opened a pop-up shop in London in response to an ongoing trademark dispute with a card manufacturer. The attorney representing the card company reacts to the opening. Read more

Enforcement and litigation

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Today

LIVINGDREAMS mark put to bed on appeal

The appointed person has upheld a decision of the UKIPO finding that there was a likelihood of confusion between the figurative mark LIVINGDREAMS in Class 20 and earlier marks consisting of, or containing, the word ‘dreams’ in Classes 20, 24 and 35. Read more

19 Nov 2019

Bent(ley) out of shape in trademark dispute

In Bentley 1962 Ltd v Bentley Motors Ltd, the High Court of England and Wales has found that Bentley Motors, the well-known manufacturer of luxury vehicles, had infringed trademarks belonging to a small UK-based clothing company.  Read more

6 Nov 2019

High Court dismisses Glaxo's passing-off claim for competitor's use of the colour purple

The decision of the High Court of England & Wales in Glaxo Wellcome UK Ltd v Sandoz Ltd reaffirms the well-established principles of the tort of passing off and the difficulties of proving goodwill in a colour. Read more

4 Nov 2019

“They hoped to grind us down” – Bentley Clothing voices relief at trademark win against motoring giant

UK family-run fashion business Bentley Clothing has prevailed against Bentley Motors in a long-running trademark dispute. Talking to WTR, the owner of Bentley Clothing speaks of the stress that the case has caused. Read more

Goverment/policy

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5 Sep 2019

Kicking out counterfeits from the Premier League: takeaways from Football Against Fakes 2019 – exclusive guest post

This week's Football Against Fakes 2019 event discussed anti-counterfeiting work in the sports industry. In an exclusive guest post, brand protection consultant Stephen Connolly reveals insights from the event and takeaways for brand owners. Read more

30 Aug 2019

Liverpool mayor trademark opposition, USPTO fee change proposal, and Telltale revival criticised: news digest

In our latest round-up, we look at Beyoncé being accused of fraud linked to a trademark dispute, Bangladesh likely to join the Madrid Protocol, a Chinese IP law firm considering a sale, and much more. Read more

28 Aug 2019

Innovation, globalisation, mobile apps and jazz – takeaways from Singapore IP Week

This week the IP Office of Singapore has hosted a series of events to mark the country’s annual IP Week. WTR was there to bring you the key takeaways from Singapore’s biggest IP event. Read more

15 Aug 2019

Six counterfeit hotspots you should be aware of in Scotland

People from around the world have flocked to Scotland this month to enjoy Edinburgh’s legendary Fringe festival. Talking to WTR, one expert highlights why fake goods are no laughing matter and identifies counterfeit hotspots in Scotland that brand owners should police. Read more

Law firms

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27 Sep 2019

Despite concerns over the level of risk, litigation threat planning often omitted from IP strategies

New research has revealed that, while almost two-thirds of legal services buyers are concerned about being a defendant in IP litigation, a quarter of companies that have a specific IP strategy in place state that it does not deal with litigation threats. Read more

24 Sep 2019

Managing Trademark Assets returns to London with more interactivity and deep dive discussions 

WTR is pleased to announce that, following the success of this year’s event, Managing Trademark Assets Europe will be returning to London on 28 January 2020. Read more

13 Aug 2019

Diversity in the legal workplace: exclusive interview with the co-chair of Women in IP

Joanna Conway, co-chair of Women in IP, reflects on the diversity challenges that exist in the legal IP world and how the organisation is working to improve the environment. Read more

1 Aug 2019

Mind the gap – why law firms must bridge the gender divide

The legal sector is traditionally a male-dominated industry and although that is changing, more work needs to be done to combat inequality. Read more

IP offices

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17 Oct 2019

UK government steps up efforts to encourage IP-backed lending, but challenges must be overcome

Inngot has announced it is staffing up following two research project commissions from UK government organisations related to the stimulation of IP-backed lending. We look at the challenges ahead. Read more

16 Oct 2019

Tackling bullying and sexual harassment in the legal workplace: exclusive interview with Kieran Pender 

The International Bar Association released a groundbreaking study on bullying and sexual harassment in the legal profession earlier this year. WTR caught up with the project's leader, Kieran Pender, in the midst of a global awareness campaign centred on this problem rife within the industry.  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

5 Sep 2019

UKIPO paints differing pictures on Brexit preparedness as IP minister quits

The UK Intellectual Property Office has shed new light on its Brexit preparations, which has led to a renewed call for the position of UK trademark attorneys in the event of a no-deal Brexit to be addressed “as a matter of urgency”. Read more

Online

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6 Sep 2019

“Rational and forward-thinking” – CJEU rules cases of online trademark infringement can be held in consumer’s jurisdiction

Reaction to the Court of Justice of the European Union ruling in favour of plaintiffs suing online infringers in the member state they acquired the product.  Read more

22 Aug 2019

Stellar speaking faculty revealed for Brand Protection Online Europe

WTR is pleased to unveil the speaking faculty for Brand Protection Online Europe, taking place in London on 14 October 2019. Among the latest names revealed are experts from Daniel Wellington, Dyson, PayPal, Superdry and Tommy Hilfiger. Read more

2 Aug 2019

Brexit warning for trademark lawyers, Yeezy Busta interview, and UK IP minister uncertainty: news digest

In our latest round-up, we look at a win for adidas, the TTAB stubbing out federal marijuana trademarks again, a YouTube star attempting to sell fake goods as genuine, and much more. Read more

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

Portfolio management

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11 Oct 2019

ADDICTED 'marijuana' device mark invalidated on application by adidas

In a decision that provides a warning to companies seeking to parody well-known brands, the UK Intellectual Property Office has upheld adidas's application for a declaration of invalidity of the device mark ADDICTED. Read more

27 Sep 2019

Despite concerns over the level of risk, litigation threat planning often omitted from IP strategies

New research has revealed that, while almost two-thirds of legal services buyers are concerned about being a defendant in IP litigation, a quarter of companies that have a specific IP strategy in place state that it does not deal with litigation threats. Read more

24 Sep 2019

CLWB TROPICANA mark whammed by appointed person

The appointed person has dismissed an appeal against a successful opposition to an application for the CLWB TROPICANA logo mark for a range of Class 32 goods. Read more

30 Aug 2019

Crimson wave – how Harvard outstrips other universities in terms of registered trademarks

Ivy League schools rely on their reputation to attract top-notch talent, so policing these brands is a critical undertaking. Read more

Trademark law

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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

17 Oct 2019

The Sky v Skykick opinion: what it could mean for trademark professionals

Advocate General Tanchev has handed down his opinion in the highly anticipated Sky v Skykick case. If the opinion is followed by the CJEU, market experts predict that the enforcement of existing trademark registrations could become riskier, while application strategies would have to be reviewed. Read more

1 Oct 2019

A tale of two flags: who owns the right to use?

The Australian government is considering whether to compulsorily acquire the rights to use the Aboriginal flag on public policy grounds. The debate raises questions over whether similar moves could occur in other jurisdictions. Read more

1 Oct 2019

Procedures and strategies for pharmaceutical brands: United Kingdom

Given the highly profitable trade in pharmaceutical parallel imports where price differences and arbitrage opportunities arise from different national pricing regulations, it is anticipated that the issue of parallel imports will remain a significant area of concern for pharmaceutical companies. Read more

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Aaron Montero
Partner
San Jose, Costa Rica
Eproint