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13 December 2019

General Court confirms similarity of BILLA and BILLABONG marks

In a victory for the owner of the BILLABONG mark, the EU General Court has confirmed that there was a likelihood of confusion between the marks BILLA and BILLABONG with regard to certain goods and services.

13 December 2019

Uber’s loss of its London license a reminder of the importance of brand reputation: data analysis

Safety is the most critical component of brand building in the ride-hailing app environment, but hinging success on such a volatile factor could be risky

13 December 2019

Boris, Brexit and brands – what the UK election result means for trademark owners

The Conservative Party has landed a significant victory in the UK general election, with a majority that essentially confirms that Brexit will occur at the end of January 2020. The result could have significant implications for IP owners.

13 December 2019

“Europe is not yet prepared” – reaction as Cannabis mark ruled unregistrable by EU court 

The General Court of the European Union has ruled against a trademark due to its implied links to illegal narcotics. Industry experts give their reaction.

13 December 2019

UDRP: do not gamble on refiling

A UDRP decision concerning the domain names ‘casinoseminole.com’, ‘seminolecasino.com’ and ‘seminolegaming.com’ sheds light on the complicated matter of refiling, especially in cases of an apparent transfer of control.

12 December 2019

General Court provides guidance on use of mark in form differing in elements which do not alter its distinctive character

In KA Schmersal Holding GmbH & Co KG v EUIPO, the EU General Court has confirmed that there was a likelihood of confusion between the mark TEC.NICUM and the earlier mark TECNIUM for services in Class 42.

12 December 2019

Going undercover – tips for monitoring the Central Asia counterfeiting market

As the most developed region in Central Asia, Kazakhstan serves as a transit point for counterfeit goods that are produced in China and trafficked to Russia and then Europe. However, there are legal measures that brand owners can take while awaiting improvements to the existing IP legislation.

12 December 2019

Meme theft: how legal should engage with social media marketing to handle repost crises

Social media marketing departments are reposting UGC on their own sites often with little or no credit to the original creator, which should ring alarm bells for trademark counsel.

12 December 2019

Supreme Court: payments attributed to brand compliance guidance must be added to goods’ value for import duty purposes

In a case of first impression, the Israeli Supreme Court has held that royalties paid by licensees and distributors with respect to the marketing of goods bearing well-known fashion trademarks were deemed part of the goods’ value for customs purposes.

12 December 2019

Five counterfeit hotspots in Poland that brand owners must be aware of

In the next edition of our series on markets around the world that reportedly engage in the sale of fake goods, we head to Poland.

11 December 2019

USMCA given green light; significant GI changes now a step closer to reality

The Canadian, Mexican and US governments have signed an amended version of the USMCA, meaning that ratification is a significant step closer – with the deal highlighting what IP concessions the Trump Administration will expect in future trade deals.

11 December 2019

As Congress investigates USPTO trademark fraud, research finds suspicious specimens continue

A new investigation from WTR finds that the problem of suspicious specimens persists – with legal representatives providing eye-opening accounts of the challenge faced by both IP practitioners and examining attorneys.

11 December 2019

Federal Administrative Court confirms that figurative mark containing the word ‘Paris’ is deceptive

In a blow to German supermarket chain Lidl, the Swiss Federal Administrative Court has confirmed that the figurative mark ESMARA SEE YOU IN PARIS was deceptive.

11 December 2019

DERMOFAES v DERMOWAS: the role of weakly distinctive elements and the public’s level of attention in assessing likelihood of confusion

The EU General Court has confirmed that there is no likelihood of confusion between the mark DERMOFAES ATOPIMED in Classes 1, 3 and 5, and the earlier word mark DERMOWAS in Classes 3 and 5.

10 December 2019

As ad agencies and brands clash over IP creation rights, counsel should be prepared for pushback

Conflict has grown between advertising agencies and clients over a growing trend to withhold payment and IP ownership from rejected pitches. With disputes potentially spanning copyright and brands, it is a tension that trademark counsel should be prepared for.