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17 January 2018

Alibaba on the offensive: warns brands not to trust Notorious Markets List, undecided on future cooperation

​​​​​​​Alibaba Group continues to talk tough in the wake of Taobao remaining on the USTR's latest Notorious Markets List, now suggesting that brand owners should no longer trust the report.

12 January 2018

Alibaba labels itself a “scapegoat” as Taobao remains on USTR's Notorious Markets List

​​​​​​​The Office of the US Trade Representative (USTR) has released the latest edition of its annual Review of Notorious Markets. The re-admission of Taobao to the list has spurred owner Alibaba Group to label itself a "scapegoat".

24 November 2017

With Black Friday in full swing, exclusive research reveals brand protection gaps in new gTLDs

While consumers enjoy the low prices offered on Black Friday, the sales period is a significant challenge for trademark practitioners – especially for protecting shoppers from online scams. 

23 November 2017

Chanel bursts through $1 billion damages barrier as Coach revealed as top US trademark litigation filer

New data reveals that while Coach has filed the most US trademark litigation actions over the past nine years, Chanel is a clear leader in terms of bang for their litigation buck. 

25 October 2017

Alibaba unveils new auto parts policy, industry groups split over anti-counterfeiting efforts

Alibaba has announced the ban of listings offering car airbag components on two of its cross-border e-commerce platforms, a move welcomed by the Automotive Anti-counterfeiting Council. 

25 September 2017

Court awards Tiffany damages in Costco infringement case

In the most recent development in the trademark infringement case between Costco and Tiffany, the court awarded Tiffany $11.1 million in trebled profits and an additional $8.25 million in punitive damages. 

12 September 2017

Reports of fake law firm takedown heaps pressure on Amazon over IP rights complaint handling

Over the past few days media reports have focused on the case of an individual seller who saw his Amazon.com store shut down over an alleged IP-related violation lodged by a bogus law firm.

01 September 2017

Landlord liability for counterfeits – coming soon to Canadian premises near you?

In Canada, there is as yet no clear precedent for holding a landlord liable as an intermediary for dealings in counterfeits on its premises. However, a case launched last year by Louis Vuitton could be about to change this

15 August 2017

Costco to appeal latest ruling in Tiffany dispute; claims case isn't about “common understanding” of counterfeiting

A US District Court judge has found that Tiffany & Co is entitled to recover $11.1 million in lost profit (plus interest), as well as $8.25 million in punitive damages, from Costco over the sale of counterfeit Tiffany rings. In response, the wholesale giant has pledged to appeal, contending that the case is not about counterfeiting “in the common understanding of that word”.

28 July 2017

New anti-counterfeiting coalition aims "to lead” in lobbying Trump administration to step up fight against fakes

The Precious Metals Association of North America has announced the formation of a national coalition to “protect IP rights against foreign counterfeiting operations”. A representative tells World Trademark Review that the organisation has already begun discussions with influential members of Congress and the Trump administration to strengthen federal efforts to tackle foreign counterfeit operations.

25 July 2017

Groundbreaking study suggests extraterritorial application of US trademark law “burdens” rights holders

A first-of-its-kind empirical study into the territorial scope of US trademark law has concluded that much of the conventional wisdom regarding extraterritorial rights “is questionable, if not incorrect”, with its author declaring that “the current over-extension of the Lanham Act must be curbed”. Crucially, the research provides insights that could aid US brand owners in future enforcement endeavours.

28 June 2017

Nike’s reported partnership with Amazon has both economic and anti-counterfeiting implications

It has been reported that Nike is preparing to sell products directly through Amazon.com for the first time, utilising the latter’s new brand registry offering. As well as representing a potential commercial win for both companies, the move could highlight the benefits of the e-commerce giant’s new programme for brands fighting the spectre of counterfeit goods on the platform.

19 June 2017

Amazon not liable for infringement by third-party sellers

The Federal Circuit in Milo & Gabby LLC v Amazon.com, Inc has upheld a district court’s decision that Amazon was not liable for infringement by third-party sellers offering knock-off products through Amazon’s online marketplace, even where the third-party sellers use Amazon’s fulfilment services to deliver the product to the ultimate customer.

18 May 2017

Anti-counterfeiting: the problems, the players and the missing piece of the puzzle

In order to effectively enforce against counterfeiting, INTA navigates the enforcement puzzle by connecting the different players together, one piece at a time.

18 May 2017

Procedures and strategies for anti-counterfeiting: United States

Civil counterfeiting enforcement primarily falls under the Lanham Act (15 USC Section 1051), while criminal counterfeiting enforcement primarily falls under 18 USC Section 2320. Although many states have their own laws imposing civil and criminal penalties for counterfeiting, most anti-counterfeiting actions in the United States apply federal law.