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06 April 2018

First draft of new trademark law: what are the main changes?

The Romanian Patent and Trademark Office has published the first draft of the new trademark law, which aims to transpose Directive 2015/2436 into national legislation. This update sums up the most important changes.

03 April 2018

Is figurative mark containing word 'Mafia' contrary to public policy? General Court decides

The EU General Court has confirmed a decision of the EUIPO upholding the Italian government’s application for a declaration of invalidity of the figurative mark LA MAFIA SE SIENTA A LA MESA.

29 March 2018

Court of Appeal: 'stick' and 'stix' are distinctive for Class 30 goods

In a somewhat unusual decision, the Turkish Court of Appeal has found that the words 'stick' and 'stix' were the dominant elements of the plaintiff's trademarks and that they were distinctive for Class 30 goods.

19 March 2018

Commodores decision: former band member must sail on down the line

In Commodores Entertainment Corp v McClary, the US Court of Appeals for the 11th Circuit has upheld a permanent injunction precluding a musician from using the trademarks of his former band. 

15 March 2018

First Circuit allows Chapter 11 debtor to terminate trademark licence; creates split with Seventh Circuit

In In re Tempnology, the US Court of Appeals for the First Circuit has held that Chapter 11 debtors may reject trademark licences, thus creating a split with the Seventh Circuit over a company’s ability to terminate a trademark licence while in bankruptcy.

12 March 2018

Bacardi bourbon battle hits the mainstream press; UK company pledges to fight on

Over the past few days, a UK business owner’s dispute with Bacardi over its Angel’s Envy bourbon brand has garnered media attention in trade and national press titles. The dispute highlights a quandary for large companies when the ‘David v Goliath’ narrative is cited – whether to engage in public arguments or to keep quiet.

10 May 2018

As Alibaba’s Anti-counterfeiting Alliance grows, is Amazon now the primary battleground in the war against fakes?

Alibaba Group has confirmed that membership to its Anti-Counterfeiting Alliance has climbed to over 100 brands. Exclusive survey data reveals the Chinese retail giant is still a challenge for rights holders – but respondents claim Amazon is “less and less willing to help brand owners”.

09 May 2018

China’s trademark office to drastically reduce filing times; experts confident quality will be maintained

China’s State Intellectual Property Office has revealed that filing review times at the trademark office will be reduced to six months by the end of the year and to four months by 2020. We speak with experts in the country for their view on the implications of this ambitious move.

04 May 2018

3D Kit Kat mark: advocate general delivers further blow to Nestlé

The advocate general has delivered another blow to Nestlé in its long-running attempt to register the shape of its four-fingered Kit Kat bar as a three-dimensional EU mark.

09 April 2018

ECJ delivers blow to mobile.de: cancellation proceedings against MOBILE.DE can resume

Following a decision of the Court of Justice of the European Union, the long-running cancellation proceedings between mobile.de GmbH and Rezon OOD can now continue before the Cancellation Division of the EUIPO.

14 December 2017

Specific figurative context with respect to identity of word elements of marks

The Luxembourg General Court issues its judgment in a case concerning the complaint of Frame Srl against the Office for Harmonisation in the Internal Market’s decision to uphold part of Bianca-Moden’s opposition to the trademark BIANCALUNA.

13 December 2017

Innovators and revolutionaries: WTR's trademark personalities of the year (part one)

As the year draws to a close, World Trademark Review has decided to take a look back and identify the trademark personalities that have had a significant impact in 2017.

11 December 2017

Trademark litigant must produce documents held by foreign subsidiary

A US district court has held that Republic Technologies (NA), LLC could be compelled to produce documents located in France if they were relevant and within Republic’s control with regard to a declaratory judgment action against competing cigarette paper manufacturer HBI International. However, the court limited production to those documents that were used in or revealed the design process for products marketed and sold by Republic in the United States.

05 March 2018

Sky v Skykick headed to ECJ on breadth of registrations; answers will be significant for all brand owners

The High Court in Sky plc v SkyKick UK Limited will refer five questions to the ECJ on trademark issues relating to bad faith (for filing with no intention to use) and clarity issues with trademark specifications. 

02 March 2018

Constitutional Court softens country's stance on parallel imports

The Constitutional Court has confirmed that the principle of national exhaustion of trademark rights is constitutional, but  has increased the burden of proof imposed on trademark owners in parallel importation cases.