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21 June 2017

“We are the online leader in anti-counterfeiting”: Alibaba’s Jack Ma talks tough as company seeks to woo US SMEs

This week Alibaba is hosting a two-day conference designed to highlight to a range of US-based small and medium-sized enterprises the lucrative business opportunities available in China (and how the e-commerce giant can help them tap into the market). In an on-stage interview, executive chairman Jack Ma took the opportunity to talk up the company’s anti-counterfeiting activities. By making brand protection a central part of its pitch to new customers, the responsibility to provide a truly trusted environment is increasing.

21 June 2017

The search to prove that trademark dilution exists; new study casts “serious doubt” on validity of current evidence

Trademark dilution is an often-used legal concept by rights holders of well-known brands, and has been at the centre of a number of well-publicised court battles. Nonetheless, it is also an elusive concept and a new study – which sought to shine further light on the phenomenon – has concluded that there are “serious doubts” on the validity of all current evidence of its existence.

15 June 2017

ECJ widens scope for forum shopping in Hummel Holding v Nike

The European Court of Justice has provided two broad requirements to satisfy the notion of ‘establishment’ under Article 97(1) of the Trademark Regulation. This ensures that most disputes involving EU trademarks – no matter whether the defendant has its seat in the European Union – fall under the remit of EU trademark courts and their ability to grant EU-wide injunctions.

14 June 2017

High Court rules on scope of protection for reputed marks

The Danish Maritime and Commercial High Court has upheld an appeal board ruling on the scope of protection for the reputed trademark ECCO. It stated that the use of registered trademarks by a non-competing commercial foundation would not result in the unfair advantage of, or be detrimental to, the mark's repute.

13 June 2017

INSTASITE held too descriptive for EU trademark registration

The EU General Court has upheld a decision by the EU Intellectual Property Office Board of Appeal not to register INSTASITE in Classes 9 and 36 on the grounds that the mark applied for was descriptive of the goods and services covered, and devoid of any distinctive character.

26 July 2017

As critics label Alibaba’s anti-counterfeit efforts a “drop in the bucket”, details emerge of brand alliance progress

Last week Alibaba announced success in a civil suit against a pet food vendor indicted for selling counterfeit cat food on Taobao. While the company highlights the action as an example of its crackdown on counterfeits, one industry commentator has labelled such actions as “window dressing” and called on the e-commerce giant to do more. Against this backdrop, World Trademark Review has obtained information about ongoing discussions between Alibaba and a group of brands on future enforcement efforts.

24 July 2017

Counterfeit buyers increasingly using Chinese agents that promote sending fakes through “sensitive shipping lines”

Evidence suggests that purchasers of counterfeit goods are increasingly using buying agents in China to send their products to them internationally. Worryingly, some of these agents are proactively promoting their ability to get replica products through customs – with one promising that they will be sent via “sensitive shipping lines”.

20 July 2017

E-filing of industrial property applications in Vietnam

The National Office of Intellectual Property has launched an online filing portal for industrial property applications, which is currently on trial and being developed to run more efficiently, especially with regard to payment procedures.

17 July 2017

Copycat packaging enjoined for unfair competition on dilution grounds

The Seoul Central District Court recently granted a preliminary injunction against the sale of a banana-flavoured jelly product on the grounds of dilution. The court found that the plaintiff's banana-flavoured milk product was a well-known source identifier. As such, the plaintiff had rights to its appearance even for non-milk products.

28 February 2017

Supreme Court invalidates registration for ROUTE 66

The Supreme Court has found that the registration of the mark ROUTE 66 for certain tourism-related goods and services was invalid. Among other things, the court found that the average Norwegian consumer would perceive ROUTE 66 as a geographical place. The fact that this road stretch had lost its formal status as part of the US highway system did not imply that it could no longer be considered as a geographical place.

27 February 2017

Companies Commission prohibits corporate names which may mislead as to identity of company

The Companies Commission of Malaysia has issued the Guidelines on Company Names, which apply to all applications for registration of the name for incorporation of a company or a change of corporate name. In practice, the CCM now prohibits applicants for registration of a new corporation or business from adopting a name which is identical to a registered trademark.

24 February 2017

Professor slams ‘pro plain packaging for alcohol’ media reports, calls for more research into warning labels

A new study which looks at the effectiveness of warning labels on alcoholic products has slammed media reports claiming that it is advocating for plain packaging. Talking to World Trademark Review, Matthew Field, a professor of psychology at the University of Liverpool, claims the study has been ‘misrepresented’ by the media and voiced doubt that plain packaging would ever be implemented on alcoholic or sugary products.

24 February 2017

ECJ rules on repackaging of parallel-imported medicinal products

In Ferring Lægemidler A/S v Orifarm A/S, a reference for a preliminary ruling from the Danish Maritime and Commercial Court, the ECJ has ruled again on the conditions a parallel importer must meet in order to show that it is 'necessary' to repackage medicinal products for sale in the country of import.

23 February 2017

Federal Circuit instructs TTAB to revisit software services as evidence of use

In In re JobDiva Inc, the Federal Circuit has reviewed the extent to which certain services can be rendered through related computer software services. The court examined whether the trademark owner used its marks in commerce in connection with “personnel placement and recruitment services”, or whether it had failed to use the marks in connection with services because its use was only in connection with software offerings.

23 February 2017

The search is on for the trademark luminaries who deserve a place in the IP Hall of Fame

It’s that time of year when our sister title IAM invites the global IP community to make its nominations for the IP Hall of Fame’s annual intake. The latest members, selected from your nominees, will be formally inducted at IPBC Global 2017 in Ottawa, Canada, this June.