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20 September 2017

Thailand to join Madrid Protocol

From November 7 2017 it will be possible to file a trademark via the Madrid system or through a national application directly with the Department of Intellectual Property. The existing system is complicated, regimented and inconsistent; however, time will tell whether the Madrid system will make registration any easier.

18 September 2017

New design protection law

A new design law has been approved by Parliament and will come into force in August 2018. The new law will provide the legal basis for protection of designs, and will eventually replace the Patents and Designs Ordinance 1924. It aims to provide small and medium-sized local enterprises and individual designers, as well as global enterprises, with effective ways to protect their designs and enforce their rights.

15 August 2017

Mystery over fake TMview site owned by Gleissner; source suggests tycoon may seek license fee from EUIPO

A website owned by a company related to notorious trademark filer Michael Gleissner has been found imitating the EU Intellectual Property Office’s search platform TMview. The site has been described as a “phishing page” by one attorney, but an insider source tells World Trademark Review it is more likely that the entertainment tycoon is looking to sell or license the domain to the EUIPO.

26 September 2017

Taiwan approves major amendment to protect trademarks at the border

A major amendment to the regulations governing customs border measures will be key in the protection of trademarks. The measures allow the owner of a trademark to apply to have it recorded on Customs' database, enabling Customs to seize counterfeits when it inspects imported or exported goods ex officio.

16 October 2017

Checked pattern held to be well-known trademark

In an unusual trademark case concerning a blue-and-white checked pattern used on bed linen, the Danish Maritime and Commercial High Court has ruled in favour of Hästens Sengar AB, which sued the Nordicform group of companies for infringement. The court held that the pattern had acquired distinctiveness through use and the relevant consumers were expected to show a high degree of attention due to the character and price of Hästens beds.

07 July 2017

A TTAB trend – barring surname trademarks

In a published opinion authored by Justice Quinn, the Trademark Trial and Appeal Board has continued its recent trend of denying applications on the Principal Register of names that could be characterised as a surname, unless there is evidence of acquired distinctiveness.

06 July 2017

Exclusive survey finds OAPI agents broadly optimistic but concerns raised over frequent errors, slow examinations and soaring trade in fakes

An independent survey conducted by World Trademark Review has assessed the sentiment of agents accredited by the African Intellectual Property Organisation (OAPI) and feedback was decidedly mixed.

06 July 2017

Clash of the cleaners

In a recent decision under the Uniform Domain Name Dispute Resolution Policy before the World Intellectual Property Organisation, a panel not only denied the complaint, but also held that it had been brought in bad faith and constituted an abuse of the administrative proceeding – a practice known as ‘reverse domain name hijacking’.

04 July 2017

Regulations of Legislative Decree 1075 have been approved

In December 2016 Legislative Decree 1309 was published in the Official Gazette El Peruano. This decree establishes that the Executive Branch will issue the regulatory provisions of Legislative Decree 1075.

26 July 2017

As critics label Alibaba’s anti-counterfeit efforts a “drop in the bucket”, details emerge of brand alliance progress

Last week Alibaba announced success in a civil suit against a pet food vendor indicted for selling counterfeit cat food on Taobao. While the company highlights the action as an example of its crackdown on counterfeits, one industry commentator has labelled such actions as “window dressing” and called on the e-commerce giant to do more. Against this backdrop, World Trademark Review has obtained information about ongoing discussions between Alibaba and a group of brands on future enforcement efforts.

24 July 2017

Counterfeit buyers increasingly using Chinese agents that promote sending fakes through “sensitive shipping lines”

Evidence suggests that purchasers of counterfeit goods are increasingly using buying agents in China to send their products to them internationally. Worryingly, some of these agents are proactively promoting their ability to get replica products through customs – with one promising that they will be sent via “sensitive shipping lines”.

21 June 2017

“We are the online leader in anti-counterfeiting”: Alibaba’s Jack Ma talks tough as company seeks to woo US SMEs

This week Alibaba is hosting a two-day conference designed to highlight to a range of US-based small and medium-sized enterprises the lucrative business opportunities available in China (and how the e-commerce giant can help them tap into the market). In an on-stage interview, executive chairman Jack Ma took the opportunity to talk up the company’s anti-counterfeiting activities. By making brand protection a central part of its pitch to new customers, the responsibility to provide a truly trusted environment is increasing.

21 June 2017

The search to prove that trademark dilution exists; new study casts “serious doubt” on validity of current evidence

Trademark dilution is an often-used legal concept by rights holders of well-known brands, and has been at the centre of a number of well-publicised court battles. Nonetheless, it is also an elusive concept and a new study – which sought to shine further light on the phenomenon – has concluded that there are “serious doubts” on the validity of all current evidence of its existence.

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.

27 July 2017

High Court grants full protection to unregistered trademark

In a recent case, the Beijing High Court applied both Articles 13.1 and 31 of the 2001 Trademark Law to grant full protection to an unregistered trademark and clarified the assessment criteria of well-known status in the internet industry.