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22 February 2016

Open source Kodi offers positive example of trademark community engagement

Pledges by technology companies to rigorously enforce their trademarks are usually met with hostility and criticism online. However, a statement from the developers behind open source software Kodi vowing to crack down on trademark infringement, and even asking its community for help in this effort, has largely been welcomed, thanks to transparent engagement and a proactive social media strategy

19 February 2016

Court order creates an online search results conundrum for Uber

The United States District Court Northern District of Florida has ordered Uber Technologies to ensure that specific search engine results in Alachua County do not replace the results for local company Uber Promotions. The ruling potentially places Uber Technologies in a tricky situation, as it seeks to ensure that results across multiple search engines comply with the order.

15 February 2016

Groundbreaking blockchain technology could “eliminate unwanted counterfeits”, predicts expert

Growing use of technology based on the Bitcoin protocol will transform the fight against counterfeiting, claims one industry expert, who suggests that it could also help to rebuild consumer trust in luxury brands.

10 February 2016

Fake ‘Minecraft’ app puts spotlight on coding marketplaces that are “fuelling pirate community on app stores”

A new trend of sellers on online marketplaces offering customisable code for programmers to easily reskin popular phone apps is on the rise, and should be on the radars of all trademark counsel who enforce marks that are represented on app stores. The good news is that, as one industry expert notes, taking down one infringing customisable code could potentially stop hundreds of infringing apps from entering the app store environment.

03 February 2016

'React World' fallout shows tangible effects of online backlash; what next for the Fine Brothers?

A YouTube comedy channel with 14 million subscribers has been forced to reverse plans to license the format of its popular ‘reaction’ videos and apply for trademarks for the names of its shows due to a huge online backlash. The dramatic loss of subscribers suffered by the Fine Brothers in the aftermath of its original announcement illustrates the very real impact that a backlash can have due to a change in IP strategy.

01 February 2016

Can metatag use constitute grounds for infringement or passing-off claims?

The Federal Court of Appeal of Canada has released a decision which opens up the possibility that use of a trademark by a third party as a metatag might give rise to a claim for trademark infringement or passing off.

27 January 2016

Creator of viral sensation ‘Be like Bill’ “shocked” by trademark application; pledges “aggressive” enforcement

The latest viral internet hit ‘Be like Bill’ has garnered over 1.5 million ‘likes’ on Facebook in the past few weeks, which means it is serious business to creator Eugeniu Croitoru. Following the discovery of a third-party UK trademark application for BE LIKE BILL, World Trademark Review has been told of his dismay at the filing and a pledge to crack down on misuse in the future.

12 January 2016

New study reveals the scale of brand support for infringing websites

A new report from the European Observatory on Infringements of Intellectual Property Rights has found that over 1,600 brands placed online advertisements on sites suspected of copyright infringement during its six-week study. The result is that companies could be helping to fund the very sites that their counsel are battling against.

08 January 2016

FTC issues guidance on native advertising, but enforcement actions will tell the real story

The Federal Trade Commission has issued an enforcement policy statement clarifying its approach to deceptively formatted advertisements. The long-awaited guidance on native advertising is welcome, although it remains to be seen just how impactful it will be in practice.

05 January 2016

Rights protection mechanisms for new internet layer outlined, but could more have been done?

OP3FT – the non-profit organisation whose purpose is to hold, promote and protect the new Frogans layer of the Internet – has expanded on the rights protection mechanisms being made available to trademark owners. However, a leading commentator has expressed disappointment at the conservative approach it has taken towards IP protection.

05 January 2016

IPEC finds marks descriptive in dispute between educational charities

In NOCN (Formerly National Open College Network) v Open College Network Credit4Learning, a trademark infringement and passing-off dispute between two educational charities concerning the use of the term 'Open College Network' and its abbreviation 'OCN', the Intellectual Property Enterprise Court has held that neither party could claim trademark rights or goodwill in either term due to their wholly descriptive nature.

05 January 2016

EFF obtains transfer of domain name used for cyber attack under UDRP

In a recent decision under the UDRP, a panel has ordered the transfer of a domain name used to facilitate the dissemination of malware. The decision illustrates the fact that, provided that a complainant owns a trademark that is identical, or confusingly similar, to a domain name used for a cyber attack, the UDRP may be used to deliver a swift response to such activities.

04 January 2016

Screen capture of website to which disputed domain names were pointing insufficient to establish bad faith

A WIPO panel has denied the transfer of the domain names ‘montecarlo.biz’ and ‘montecarlo.ws’ under the UDRP because the complainant - the owner of the marks CASINO DE MONTE-CARLO and MONTE CARLO - had failed to establish bad-faith registration and use. Among other things, the panel found that the complainant had failed to demonstrate a deliberate intent by the respondent to create a likelihood of confusion with the complainant's trademarks.

04 January 2016

Alibaba talks up anti-counterfeiting credentials in wake of USTR swipe

The Office of the US Trade Representative’s (USTR) Special 301 Out-of-Cycle Review of Notorious Markets for 2015 has identified the online marketplaces that reportedly facilitate substantial online piracy and counterfeiting. While sites owned by the Alibaba Group were not listed, the USTR highlighted concerns over its enforcement programmes. By apparent coincidence, in the same week, Alibaba announced that it was bolstering its anti-counterfeiting efforts, starting with the appointment of a new head of global IP enforcement.