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16 December 2016

Alibaba plays up its big data anti-counterfeiting credentials; launches alliance to fight fakes “for the entire industry”

Chinese online marketplace behemoth Alibaba – in collaboration with law enforcement agency partners – has revealed the results on its latest crackdown on offline counterfeiting operations. Leveraging the big data technology that Alibaba has at its fingertips, the figures appear to be impressive – with 417 counterfeit product rackets halted and 332 suspects arrested – but brand owners will be weary of rejoicing until they see tangible results for themselves.

01 December 2016

Section 45 clears register of deadwood

Following the appeal of a registrar's decision, the Federal Court has restored the intention of Section 45 proceedings by stating that these are intended to be summary in nature as a means to clear deadwood from the register, not an opportunity for evidentiary overkill.

30 November 2016

Specsavers secures SHOULD’VE trademark registration; hits out at inaccurate media coverage

Eyewear giant Specsavers has successfully secured registered trademark protection on the term SHOULD’VE, a shortened version of its well-known tagline ‘Should’ve gone to Specsavers’. The initial application at the UK Intellectual Property Office spurred negative media reaction earlier this year, with reports claiming that it demonstrates the overreach of trademark law. However, in exclusive comments to World Trademark Review, Antony Douglass, principal IP counsel at Specsavers, has hit out at the “inaccurate commentary” surrounding the mark.

24 November 2016

Brand owners are losing the battle against typosquatters; study highlights tactics that could be effective

New research has found that typosquatters are becoming increasingly adept at securing the most valuable brand-related domains, with the authors suggesting that many brands “do not know which domains they should target for reclaim”.

14 November 2016

$18 billion in sales makes for Alibaba’s biggest-ever Singles Day – but what cut is going to counterfeiters?

The Chinese celebration of Singles Day each November 11 has become one of the world’s largest shopping events – and has arguably turned into the most important day in the calendar for many of the world’s top brand owners. But as e-commerce giant Alibaba reports record Singles Day turnover for 2016, as well as greater-than-ever buy-in from foreign brands, the true extent of trademark infringement and counterfeit trade taking place during the event remains to be seen.

10 November 2016

YUPPIECHEF fails to establish infringement

One of South Africa’s most successful and established online retailers, Yuppiechef, recently failed in the Supreme Court of Appeal to establish trademark infringement or passing off against a rival online retailer based on its trademark YUPPIECHEF.

09 November 2016

A little too close in the Greek restaurant trade

The Federal Court recently granted an interlocutory injunction to the owner of the LITTLE GREEK TAVERNA trademark, restraining use of the deceptively similar LITTLE GREEK CUZINA trademark on the basis that knowledge of the earlier business would cause consumers to wonder whether the two were connected.

03 November 2016

Alibaba pushes virtual reality usage in China; could VR counterfeit stores be next?

Next week Alibaba is to place virtual reality (VR) technology at the centre of its Singles Day sales drive, the latest in a series of high-profile uses of the technology in China. With the country’s VR industry predicted to be worth Rmb55 billion ($8.14 billion) by 2020, it makes the market one to monitor for counsel concerned over how brands may be used (for good and bad) in the virtual environment.

19 October 2016

Trademark bidders are back with a vengeance: report reveals the revenues lost by brands

New research reveals that, after a decline across the previous two quarters, in Q3 2016 the number of third-party advertisers bidding on trademark terms on Google jumped 32%. Across the search engine landscape, such bidding resulted in 2.5 billion impressions – and 38 million clicks – being lost by brands.

10 October 2016

Alibaba hits back after brands renew pressure on USTR to list sites as notorious markets

Submissions to the Office of the US Trade Representative’s (USTR) annual request for comments to identify the online and physical markets that should be included in the 2016 Notorious Markets List has seen renewed calls for Alibaba to be relisted. However, the online giant has confirmed the filing of a rebuttal comment, telling World Trademark Review that its submission describes its steadfast efforts to fight counterfeiters online.

05 October 2016

Lanham Act goes to the merits of a claim

The Ninth Circuit Court of Appeals has held in Trader Joe’s Company v Hallatt that the extraterritorial reach of the Lanham Act is a question of the claim’s merits rather than a question of the court’s subject-matter jurisdiction.

28 September 2016

The first of the gTLD blockbusters? Assessing the ‘.shop’ launch figures

This week the ‘.shop’ gTLD hit general availability, with the registry behind the string revealing that it registered almost 40,000 domains in the first 30 minutes of sales. Watchers of the expanded online space – particularly trademark owners seeking to gauge the need for defensive registrations – have been awaiting the launch of strings that go truly mainstream. So is the early performance of ‘.shop’ a sign that the blockbusters are now arriving?

13 September 2016

McWin for McDonald’s over MacCoffee

In Future Enterprises Pte Ltd v EU Intellectual Property Office, the EU General Court held that McDonald’s reputation makes it possible to have exclusive rights to the use and registration of trademarks that contain the prefix ‘Mac’ or ‘Mc’ for food and beverages.

08 September 2016

“Help us help you”: international trade groups lay out anti-counterfeiting demands to Alibaba

A coalition of international brand and trade groups has sent a letter to senior figures at Alibaba Group highlighting continued concerns around the implementation of effective anti-counterfeiting measures on its platforms. While the letter includes scathing criticisms of some of the currently available tools – decrying the processing of non-good faith notices as “woeful” – it offers a number of practical recommendations on how the online giant could improve.

21 July 2016

Birkenstock leaves Amazon "to counterfeiters, fake suppliers and unauthorised sellers" as IP concern mounts

German footwear maker Birkenstock has decided to quit the Amazon marketplace in protest at what it perceives to be a lax approach to counterfeiting on the part of the online retailer.