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04 May 2017

Unjustified threats overhaul receives royal nod, raises prospect of increased weak infringement allegations

With the UK Intellectual Property (Unjustified Threats) Act receiving royal assent, clarity on what can be said in pre-action correspondence relating to trademark disputes is a step closer. While the bill has been welcomed, one commentator has warned that the protection from liability afforded to legal advisers could lead to an increase in knowingly weak allegations of infringement.

29 March 2017

As ‘Brexit Day’ arrives, now is the time for brands to identify what IP rights could be affected

The United Kingdom government officially triggered Article 50 at lunchtime today, beginning the two-year process of negotiations that will lead to the UK leaving the European Union. While uncertainty still reigns, the impact on trademarks and designs could be significant – and with Brexit now a certainty, brand owners should ensure they know exactly what rights could be affected once ‘leaving day’ arrives.

29 March 2017

The future of a European brand owners’ association in a global IP community

In 2016 MARQUES, the European Association of Trademark Owners, celebrated the 30th anniversary of its first official conference. In this chapter, Gregor Versondert provides some highlights from this special conference and explains how MARQUES has achieved its objectives within the European and international IP framework.

24 February 2017

Professor slams ‘pro plain packaging for alcohol’ media reports, calls for more research into warning labels

A new study which looks at the effectiveness of warning labels on alcoholic products has slammed media reports claiming that it is advocating for plain packaging. Talking to World Trademark Review, Matthew Field, a professor of psychology at the University of Liverpool, claims the study has been ‘misrepresented’ by the media and voiced doubt that plain packaging would ever be implemented on alcoholic or sugary products.

05 January 2017

Companies must shore up their social media defences in light of Donald Trump’s targeting of brands

Protecting brand reputation and managing the possible legal fallout from crisis situations are some of the main responsibilities of an in-house trademark department. One recent element that has created headaches for numerous brands in that regard is the tweeting habit of US president-elect Donald Trump, and specifically his regular calling out of companies and brands. As he prepares to take office on January 20, we take a look at how brands can react should they be the unwitting target of a Trump Twitter tirade.

16 December 2016

Trademark implications of Brexit, Trump and Samsung Note 7 crisis feature in our most-read list of 2016

As 2016 draws to a close, it’s time to take a look back at the blogs which received the most reads in the past 12 months. 

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.

18 November 2016

High Court holds common assumption invalid

The High Court recently held that a claimant could not rely on an argument of common assumption in relation to the purchase of disputed IP rights, as this relied too heavily on subjective intention. The court emphasised that parties have the ability to contractually agree termination provisions and therefore, only the terms of the contract – not the pre-contractual negotiations – should be taken into account.

11 November 2016

Settlement agreement precludes trademark infringement

The ambiguity of a settlement agreement in Oran Pre-Cast Ltd v Oranmore Precast Ltd has proved costly for the claimant, as the IP Enterprise Court found that the broad terms of the agreement precluded the clear trademark infringement and passing off claims brought against a former employee and his new company.

28 July 2016

Sky’s the limit for Skyscape when seeking a declaration of non-infringement

After Sky's solicitors wrote to Skyscape alleging that it was infringing a number of Sky's trademarks, Skyscape asked the court to grant a declaration of non-infringement. Although a viable tool in infringement cases, there are issues that claimants should bear in mind when seeking a declaration of non-infringement.

07 July 2016

Barcelona and Neymar top football trademark rankings; high-flying Leicester need to shore up their defence

Research conducted by World Trademark Review reveals the leading trademark filers in the football world, with FC Barcelona, AC Milan and Manchester United topping the list. It also demonstrates that Leicester City – a team that shocked the football fraternity by winning the Premier League title two months ago – do not yet have a trademark portfolio that matches its newfound success; although a club spokesperson tells us that it has plans to change that.

24 June 2016

“Don’t panic”: call for calm as Brexit vote creates uncertainty over future scope of trademark protection

The UK electorate has voted to leave the European Union, meaning that after months of campaigning and speculation, trademark professionals now face the very real prospect of a changed IP landscape. The exit won’t become a reality until 2018 at the earliest, meaning that EU trademarks and registered Community designs currently remain valid in the United Kingdom. However, in the interim there is a lot to be negotiated, with the UK Institute of Trademark Attorneys urging rights holders “not to panic”.

10 June 2016

Toyota hits out at trademark misuse as Brexit campaigning enters home stretch

In less than two weeks the UK electorate will vote on whether the country should remain a member of the European Union. The campaign from both sides has intensified as polling day approaches. Yesterday Toyota became embroiled in the debate, hitting out at the unauthorised use of its trademarks by the ‘leave’ camp.

26 May 2016

Lessons from the José Mourinho trademark tussle with Chelsea

It has been reported that the delay in announcing José Mourinho as the new Manchester United manager is partly down to trademark negotiations with his previous club Chelsea. While extremely unlikely to scupper his appointment, the development provides a useful lesson on the management of personal brands.

19 May 2016

Plain packaging gets green light in the UK as court dismisses legal challenge

The High Court in London has rejected a challenge to legislation introducing plain packaging for tobacco products. The decision was handed down just a day before the new regime makes effect, meaning that the UK will shortly become the latest country to implement plain packaging.