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05 May 2017

Entry into force of new Regulation on the Implementation of the Industrial Property Code

Following the Industrial Property Code’s entry into force at the beginning of the year, the new Regulation on the Implementation of the Industrial Property Code has now been published in the Official Gazette and has also entered into force.

03 May 2017

High Court determines appeal against refusal of SOVEREIGN trademark

The recently dismissed appeal against a hearing officer's decision to refuse the registration of the mark SOVEREIGN in respect of "gold commemorative coins" is a reminder that the threshold for success on appeal from a hearing officer – whether to the appointed person or the High Court – is high.

12 June 2017

Nestlé loses latest appeal in Kit Kat 3D trademark battle

Nestlé has been dealt another blow in its ongoing battle to register the shape of its Kit Kat chocolate bar as a UK trademark. The Court of Appeal has recently dismissed Nestlé’s appeal which sought to overturn an earlier High Court finding that Nestlé’s three-dimensional Kit Kat shape trademark had not acquired distinctive character.

08 June 2017

Going it alone: Cayman Islands to create local trademark registry, further calls to join Paris Convention

The new Cayman Islands trademarks law will be implemented on August 1, transforming how international brand owners attain protection in the Caribbean jurisdiction. 

07 June 2017

After USPTO director's surprise resignation, the trademark credentials of her successor need to be considered

In a surprise move, Michelle Lee, director of the US Patent and Trademark Office, has resigned after four years in the role. The discussion over her replacement will no doubt focus on the patent background of potential candidates. However, it is important that trademarks are not lost in the mix.

07 June 2017

The colourless globe

A recent decision of the EU General Court regarding the signs GLOBO MEDIA and TV GLOBO PORTUGAL illustrates the importance of differences between a sign as registered and as actually used in trade.

06 June 2017

Family name on barbecue sauce sparks trademark feud

The Trademark Trial and Appeal Board (TTAB) recently decided on a dispute between factions of the Azeka family over the right to use the family name for ribs and sauce. The TTAB denied the applicant registration of a mark deemed to be merely a surname, while the opposer was held to have abandoned the identical mark.

02 June 2017

CAESAR mark successfully blocks application for Caesarstone

In 2016 Caesarstone appealed the decision of the principal assistant registrar to allow an opposition filed by Ceramiche Caesar against an application for its house mark. The High Court upheld the appeal, but the Court of Appeal disagreed with the High Court’s rulings. This decision clarifies that, notwithstanding the differences in length and structure, the distinctive and dominant component of a mark would still be the core consideration in determining similarity.

31 May 2017

Law firm behind Trademarkia to focus on quality as it eyes aggressive international expansion

LegalForce RAPC, the law firm behind the Trademarkia search engine, has revealed to World Trademark Review that it is moving into the “next phase of the company” by implementing quality initiatives, forging new law firm partnerships and conducting an international recruitment drive. The move is an effort to bring more work in-house and diversify its global offering – and will add further competition to the legal services space.

31 May 2017

Société Elmar Wolf opposes animal head application

In Environmental Manufacturing LLP v EU Intellectual Property Office (EUIPO), the EU General Court confirmed a decision rendered by the EUIPO First Board of Appeal that two signs representing the head of an animal were visually similar to an average degree under Article 8(1)(b) of the EU Trademark Regulation.

15 August 2017

Mystery over fake TMview site owned by Gleissner; source suggests tycoon may seek license fee from EUIPO

A website owned by a company related to notorious trademark filer Michael Gleissner has been found imitating the EU Intellectual Property Office’s search platform TMview. The site has been described as a “phishing page” by one attorney, but an insider source tells World Trademark Review it is more likely that the entertainment tycoon is looking to sell or license the domain to the EUIPO.

01 August 2017

EFF highlights “trademark bullying” evasion tactics as debate over new gTLD policing heats up

The Electronic Frontier Foundation (EFF) and Public Knowledge have published a report advising domain name registrants that, in a bid to “minimise exposure to trademark bullying”, they should avoid registering domains in the new gTLD environment. While counsel may object to the ‘bullying’ label being extended to legitimate enforcement efforts, the report could have a positive payback for policing strategies.

28 July 2017

Strict conformity between signs as used and as registered unnecessary

The EU Intellectual Property Office (EUIPO) Board of Appeal recently confirmed the EUIPO Cancellation Division decision that, when examining the use of an earlier registration for the purpose the EU Trademark Regulation, the strict conformity between the signs as used and registered is unnecessary provided that the difference is in negligible elements and that these are broadly equivalent.

27 July 2017

High Court grants full protection to unregistered trademark

In a recent case, the Beijing High Court applied both Articles 13.1 and 31 of the 2001 Trademark Law to grant full protection to an unregistered trademark and clarified the assessment criteria of well-known status in the internet industry.

28 June 2017

Nike’s reported partnership with Amazon has both economic and anti-counterfeiting implications

It has been reported that Nike is preparing to sell products directly through for the first time, utilising the latter’s new brand registry offering. As well as representing a potential commercial win for both companies, the move could highlight the benefits of the e-commerce giant’s new programme for brands fighting the spectre of counterfeit goods on the platform.