News from the world

DAILY: American typo: how Trump’s COVFEFE Twitter error inspired dozens of trademarks and product launches

When US president Donald Trump mistakenly posted the typo ‘covfefe’ on Twitter in May, it quickly went viral and led to over 50 trademark filings across the globe. In the months since, a number of those applications have reached registration, with one applicant telling World Trademark Review that he is confident a brand name featuring the seven-letter misspelling will be a catalyst for business success.;

DAILY: Lawyer suggests trademark law be used “as a weapon against neo-Nazis” following misuse of Detroit Red Wings brand in Charlottesville

A leading litigator at Florida firm Johnson Pope has spoken out about how trademark law can be used “as a weapon” against the misuse of brands by hate groups. This follows global media coverage of white supremacists using the branding of the Detroit Red Wings during recent protests in Charlottesville, with the hockey club forced to issue a statement to clarify that it was not associated with the protesters.;

DAILY: Don’t panic, prepare: As Indian office steps up examinations, spike in refusals observed

As the Indian trademark office steps up its efforts to clear its long-standing backlog and process the rapidly rising numbers of applications, one practitioner has observed a resulting spike in clients receiving provisional refusals to international applications designating the country. However, rather than a cause for alarm, she argues that this trend is a natural consequence of the office upping its game.;

DAILY: 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”.;

DAILY: 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.;

DAILY: Supreme Court upholds controversial TRISOLEN decision

On May 15 2017 the Russian Supreme Court upheld a recent IP court decision that only goods that infringe a trademark in their country of origin can be prohibited from circulating in Russia. This seems to contradict Russian legislation and established practice regarding what is and is not a trademark infringement.;

DAILY: Our most-read stories of the past 12 months

The WTR Premium Daily email will be taking a summer break over August, with the full intelligence and daily email service for subscribers recommencing on Monday September 4. As we head into our break, here’s a look at the most popular articles and legal updates we have published over the past 12 months – with coverage of a call for an improved YouTube takedown process just beating the news that Google has become the world’s most valuable brand to top place.;

DAILY: Getting the message out: communication efforts take centre stage as INTA launches pro bono scheme

The International Trademark Association (INTA) has launched a two-year pro bono pilot programme, designed to offer free legal support to low-income individuals and non-profit organisations that would otherwise not benefit from trademark-related services. With the Pro Bono Trademark Clearinghouse now open, the key to success will be reaching those currently outside the INTA community.;

DAILY: New electronic publication system reduces costs and time

On June 29 2017 a supreme decree was published, approving the regulations for implementing the electronic publication system through the Peruvian Patent and Trademark Office (PTO) webpage. From July 3 2017 electronic publications will be made through the electronic gazette. This new system will simplify trademark application proceedings at the PTO.;

DAILY: New anti-counterfeiting tech firm insists it could “kill the fake markets instantly”; critic says claim “ignores the reality on the ground”

A new anti-counterfeiting technology company, which uses QR codes to allow consumers to identify authentic products, has been making bold claims since it launched in June. A representative for the company tells World Trademark Review that it has the potential to “kill the fake markets instantly” by offering free access to its technology. However, one commentator has decried IP service companies which promise an ‘end to counterfeits’.;

DAILY: Use of BMW trademarks by repair specialist is misleading

In BMW v Technosport London Limited the Court of Appeal has found that use of the BMW trademark by a company specialising in the repair and maintenance of BMWs went beyond ‘informative use’ of the trademark and was likely to cause the average consumer to assume a commercial connection with BMW.;

DAILY: In surprise move, Kering drops Alibaba lawsuit, announces “landmark” collaboration

A press release issued today has announced that Kering and Alibaba Group have signed a “landmark agreement” to cooperate in the protection of intellectual property and engage in joint enforcement activities. The shock move, by an organisation that has been highly critical of the e-commerce giant, brings to an end Kering’s headline-grabbing lawsuit against the Chinese company.;

DAILY: Court win for FC Barcelona

The High Court of Justice of Catalonia has overturned two previous decisions by the Spanish Patent and Trademark Office in favour of FC Barcelona. This judgment may set a precedent for other cases concerning Spanish industrial designs intended to protect products containing emblematic elements or images that may clash with earlier marks or signs (eg, souvenirs, stationery and ornamentation).;

DAILY: Establishment of an IP stock exchange in India

As part of the new national IP rights policy, India is set to get its own IP rights exchange (IPRX), like the United Kingdom and Hong Kong. The new IPRX will be operated under the aegis of the Ministry of Science and Technology through the National Research Development Corporation.;

DAILY: Kaane American appeal fails to reach the top

A revocation action was recently brought against an EU trademark registration owned by Kaane American International Tobacco Company. The EU Intellectual Property Office (EUIPO) Cancellation Division found at first instance that there had been no genuine use of the mark and this decision was upheld by both the EUIPO Board of Appeal and the EU General Court.;

DAILY: EFF highlights “trademark bullying” evasion tactics as debate over new gTLD policing heats up

The Electronic Frontier Foundation (EFF) and Public Knowledge have published a report advising domain name registrants that, in a bid to “minimise exposure to trademark bullying”, they should avoid registering domains in the new gTLD environment. While counsel may object to the ‘bullying’ label being extended to legitimate enforcement efforts, the report could have a positive payback for policing strategies.;

DAILY: Former founding member is not trademark owner

A recent case highlighted the potential risks when founding members apply for trademark rights. In Lyons v American College of Veterinary Sports Medicine and Rehabilitation the Federal Circuit outlined a three-factor test to determine ownership of trademark rights between a former founder and the remnant group. The organisation – rather than any individual – should register the trademark or execute a formal agreement governing ownership of the mark.;

DAILY: Trademarks come out of the Italian Patent Box

Article 56 of Decree Law 50/2017 has removed trademarks from the list of IP rights which may benefit from the package of fiscal incentives known as the ‘Patent Box’, and has also limited the access to know-how, albeit providing for a transitional period for those companies which have already exercised the three-year option to take advantage of the incentives.;

DAILY: Fighting the trademark scammers: agencies and victims convene to strategise next steps

Last week the US Patent and Trademark Office and Trademark Public Advisory Committee hosted a roundtable to strategise on how to tackle fraudulent solicitations. The in-depth discussion revealed details on how scammers go about duping consumers, and the inter-agency approach that will be required if this new ‘whac-a-mole’ challenge is going to be overcome.;

DAILY: Advocate general delivers opinion on Louboutin’s red sole trademark

The advocate general of the European Court of Justice has delivered his opinion in Christian Louboutin v Van Haren Schoenen BV, stating that the prohibition contained in Article 3(1)(e)(iii) of Directive 2008/95 could potentially apply to Louboutin’s red sole trademark. He stated that Louboutin’s trademark did not consist of a colour per se; rather, it was classified as consisting of the shape of the goods and seeking protection for a colour in relation to that shape.;

DAILY: While China's economic growth slows, trademark-backed loans buck the trend

Chinese businesses leveraged trademark rights to receive loans totalling Rmb65 billion in 2016, more than double the sums lent in 2015. Significantly, the figure dwarfs equivalent lending against patents, and comes at a time of slowing economic growth in the country.;

DAILY: UDRP gets territorial

In a recent decision under the Uniform Domain Name Dispute Resolution Policy, a three-member World Intellectual Property Organisation panel denied the transfer of a domain name as it consisted of a geographical term and there was no evidence that the new registrant had acquired it to take advantage of the association with the trademark owners.;

DAILY: Strict conformity between signs as used and as registered unnecessary

The EU Intellectual Property Office (EUIPO) Board of Appeal recently confirmed the EUIPO Cancellation Division decision that, when examining the use of an earlier registration for the purpose the EU Trademark Regulation, the strict conformity between the signs as used and registered is unnecessary provided that the difference is in negligible elements and that these are broadly equivalent.;

DAILY: First user of a mark does not always have priority

The Trademark Trial and Appeal Board has reaffirmed the well-established principle that the first user of a mark does not always have priority. SPV Coach Company, Inc applied to register the mark ARMBRUSTER STAGEWAY and Executive Coach Builders, Inc opposed the application based on its alleged prior common law rights in the mark ARMBRUSTER/STAGEWAY.;

DAILY: 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.;

DAILY: Apple’s iPad Mini registrable despite prior publication

In Apple Inc v The Registrar of Patents, Designs and Trademarks the Jerusalem District Court has overturned a decision by the Registrar of Patents, Designs and Trademarks which had rejected Apple’s Design Application 53627 with respect to the design of a tablet device on the grounds of prior publication.;

DAILY: 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.;

DAILY: One day remaining to secure the lowest delegate rate for the Managing Trademark Assets event in Chicago

The super-early bird booking deadline for the third Managing Trademark Assets conference, being held in Chicago on October 17, expires tomorrow. Book now to save $200 and guarantee your place at the event, where attendees will be able to hear from, and share best practice with, senior experts representing such firms as Accenture, Adobe, Amazon, Time, Microsoft, Toyota and Under Armour.;

DAILY: Positive news for luxury brands as advocate general paves way for tighter control of online distribution

In an opinion on a case before the European Court of Justice, Advocate General Wahl has stated that a supplier of luxury goods may prohibit authorised retailers from selling its products on third-party platforms such as Amazon or eBay. If the opinion is followed by the court, it will significantly strengthen the ability of luxury brands to control the exclusivity and market placement of their products.;

DAILY: Welcome to the domain name zone

In a recent decision under the Uniform Domain Name Dispute Resolution Policy before the World Intellectual Property Organisation, the transfer of a domain name that was identical to the complainant’s trademark consisting of two English dictionary words was denied, principally for failing to prove bad faith.;

DAILY: 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.;

DAILY: Proof of entitlement needed to file notice of opposition

In GP Joule PV GmbH & Co KG v EU Intellectual Property Office (EUIPO), the EU General Court has defined the issues in order for the EUIPO to declare an opposition ‘inadmissible’ or ‘unfounded’.;

DAILY: Anaqua and Lecorpio merger revealed; CEO pledges to “create something that doesn’t currently exist”

Anaqua and Lecorpio have announced they are to merge, with Anaqua CEO Bob Romeo talking exclusively to World Trademark Review about how the combined company will “provide something that has never before been done in our space”. The move is the latest in a wave of acquisitions to hit the IP services market – but it is unlikely to be the last, as competition for trademark spend heats up.;

DAILY: Auroville looks to Chennai High Court to protect its name

The Auroville Foundation has brought a suit for passing off against Ramaniyam Real Estates Private Limited in order to stop it from using the name ‘Aurovallie’ in relation to a real estate project or any related services.;

DAILY: 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.;

DAILY: The Internet has no borders

The Supreme Court of Canada has issued a landmark decision in Google, Inc v Equustek Solutions Inc, confirming that Canadian courts have jurisdiction to issue interlocutory injunctions against a party’s activities that extend beyond Canada and have global reach.;

DAILY: Penalty against Overstock’s false advertising affirmed on appeal

The California Court of Appeal has upheld the trial court’s ruling in the 2013 case The People v Overstock, in which the district attorney offices of a number of counties in California alleged unfair business practices and false advertising by Overstock.Com, Inc. The claims stemmed from Overstock’s comparative price advertising on its website product pages.;

DAILY: 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”.;

DAILY: ‘SO… ?’ held to be a hindrance to figurative ‘SO'BiO etic’

The EU General Court has held that the EU Intellectual Property Office Board of Appeal had correctly found a likelihood of confusion between word mark SO…? and the figurative mark ‘SO'BiO etic’ with regard to the goods which were identical or similar under Regulation 207/2009, and thus a “risk of tarnishment”.;

DAILY: Trademark industry’s corporate trailblazers profiled in unique research project

World Trademark Review is pleased to announce the publication of the enhanced version of WTR 300: The World’s Leading Corporate Trademark Professionals. This unique resource identifies the in-house experts deemed to be performing trademark-related duties to the highest standards, and features profiles of many of the industry’s leading lights.;

DAILY: TTAB defers to the courts on trademark infringement claims

The Trademark Trial and Appeal Board (TTAB) decision in Entrepreneur Media, Inc v D Nicole Enterprises, LLC highlights how litigants can successfully pursue parallel actions in both the federal court and the TTAB in order to seek injunctive remedies for trademark infringement and preclude federal trademark registration to the client’s advantage.;

DAILY: OCTASA held to be similar to PENTASA

In Tillots Pharma AG v EU Intellectual Property Office (EUIPO), the EU General Court confirmed the EUIPO Fourth Board of Appeal’s decision that two signs were confusingly similar under Article 8(1)(b) of the EU Trademark Regulation where the goods compared were identical and there was a degree of similarity between the signs.;

DAILY: E-filing of industrial property applications in Vietnam

The National Office of Intellectual Property has launched an online filing portal for industrial property applications, which is currently on trial and being developed to run more efficiently, especially with regard to payment procedures.;

DAILY: Ukraine facilitates IP protection on the Internet

The Law of Ukraine on State Support of Cinematography has come into force, including amendments to the Law of Ukraine on Copyrights and Related Rights. Although the amendments are designed to address protection of copyright on the Internet, some provisions may be helpful in dealing with other IP matters.;

DAILY: Food brands in India abandoning registered rights to avoid “trademark tax”; expert decries short-sighted reaction

Reports have emerged of a number of food traders in India giving up their registered trademarks to avoid a newly implemented 5% goods and services tax. One senior IP expert confirmed to World Trademark Review that this new tax affects both domestic and international companies, but accused companies giving up trademark registrations as taking a “myopic outlook” as the benefits of a trademark far outweigh a 5% tax outlay.;

DAILY: “Parts of vehicles” and “vehicles” in Class 12 are similar

In Industrie Aeronautiche Reggiane Srl v EU Intellectual Property Office, the EU General Court held that “parts of vehicles” and “vehicles” in Class 12 of the Nice Classification are similar. The court explained that “parts of vehicles” are essential for the use of motor vehicles and they are therefore complementary.;

DAILY: Likelihood of confusion vaporised in beauty industry case

In an unprecedential case, the Trademark Trial and Appeal Board dismissed an opposition filed by Cosmetic Warriors against the mark LUSH VAPOR owned by Tang Diem Tran for liquid e-cigarette flavourings, finding it unlikely to cause confusion with Cosmetic Warriors’ registered mark LUSH for perfumes, cosmetics and toiletry products, and related services.;

DAILY: Iconic Indian hotel is now an image trademark

The Taj Mahal Palace Hotel in Mumbai, owned by the Indian Hotels Company Limited (IHCL), has become the first building in India to get an image trademark. IHCL may now prohibit others from using images of the 114-year-old building for commercial purposes with regard to the services which are same or similar to the description of services under the trademarks obtained by IHCL.;

DAILY: Under the 2ea: TTAB holds LITTLE MERMAID merely descriptive for dolls

In a precedential decision the Trademark Trial and Appeal Board has held that LITTLE MERMAID used in connection with “dolls” in Class 28 is merely descriptive under Section 2(e)(1) of the Trademark Act, because it is understood by consumers to be a fictional public domain character and describes the appearance of the dolls, rather than identifying a commercial source for the goods.;

DAILY: Biggest marketplace on the darknet taken down by authorities; illicit goods and counterfeits still rampant

The most popular destination to trade illegal goods on the darknet, AlphaBay, has gone offline following law enforcement action by authorities in the United States, Canada and Thailand. For rights holders that have been tackling illicit goods on the darknet, this could be viewed as a blessing – but as the shutdown of the Silk Road marketplace demonstrated, users will soon flock to other markets. Exclusive research by World Trademark Review confirms that there are still thousands of counterfeit goods on sale on other darknet sites.;

Amicus Legum

IP awareness initiative: aims to raise awareness about IP and IP rights with focus on trademarks, copyright and patents, via capacity building and training initiative in schools; highlighting the dangers of buying and using counterfeit goods such as make-up, perfume, software, and consumables Educational resources: a toolkit to help the public understand the importance of protecting and respecting IP and helping them learn about the commercial benefits of IP; developing teaching resources for training of teachers and developing an IP guide for students, aimed at middle and high school (...);

Business Development Bank of Canada (BDC), Canadian Intellectual Property Office (CIPO)

Intellectual property (IP) simulation game in which players are given the opportunity to choose between two entrepreneurs' scenarios and work to explore what types of IP they should protect; is an independent online resource aimed at making UK Copyright Law accessible to creators, media professionals, entrepreneurs, students, and members of the public; goal: to provide answers to the most pressing concerns creators have about copyright, helping them understand their rights;

Police Intellectual Property Crime Unit (PIPCU)

"Wake up - don’t fake up!" campaign (2015): highlights the dangers of buying and using counterfeit goods such as make-up, perfume, electrical hair stylers and sun-cream;

Internet Keep Safe Coalition (iKeepSafe)

"Copyright & Creativity for Ethical Digital Citizens" curriculum (2015); includes lesson plans, videos, activities, and handouts designed to inspire creativity and help students make conscious choices about sharing their own creative work while understanding the value of respecting the rights of other creators;

Intellectual Property Owners Association (IPO)

IP Video Contest: challenges young adults to make a short video explaining the importance of the patent system;

NAMAN India (National Association for Mega Awareness and Nomocracy in India)

Intellectual Property (IP) Awareness initiative: aims to raise awareness about IP and IP rights with focus on patents, and change the perception that it is difficult and inconsequential for individuals to obtain patents;

Guides for students: Ultimate Guide to Copyright for Students; The Ultimate DMCA Guide for Students; A Plagiarism Guide for Students.;

State Agency on Intellectual Property (AGEPI), Ministry of Education of the Republic of Moldova (ME), Directorate General for Education, Youth and Sports (DGEYS)

National Pupil Awareness Campaign on Counterfeiting and Piracy (2014); objective: to inform pupils about counterfeiting and piracy, explaining the risks involved;

Into Film, Industry Trust for IP Awareness

"Creating Movie Magic" program (2014); objective: to explain the importance of copyright to young people, encourage a respect for the film-making process, and debate about the value of intellectual property;


Free workshops for students and academic institutions on various topics of intellectual property rights (IPR) across India;

Industry Trust for Intellectual Property Awareness, Lionsgate UK

"Postman Pat: The Movie" trailer (2014); aims to inspire film fans to choose official content with one of the UK’s best-loved childhood characters Postman Pat;

Business Action to Stop Counterfeiting and Piracy (BASCAP)

"Buy Real. Fakes Cost More" anti-fakes campaign to help consumers understand that what may seem like harmless purchases are not so harmless, and that some counterfeit products are a real threat to health and safety, jobs and the economy;

UN Office on Drugs and Crime (UNODC), World Tourism Organization (UNWTO), UN Educational, Scientific and Cultural Organization (UNESCO)

"Your Actions Count – Be a Responsible Traveler" campaign (2014) to raise awareness about the most common illicit goods and services that tourists might be exposed to while travelling; provides guidance to recognize possible situations of trafficking in persons, wildlife, cultural artefacts, illicit drugs and counterfeit goods, and invites travelers to take action through responsible consumer choices.;

Finančná správa, World Health Organization (WHO), Slovak Chamber of Pharmacists, Industrial Property Office of the Slovak Republic

"Falosne lieky" information campaign to highlight the problem of fake medicines; objective: to raise public awareness about the dangers of counterfeit medicines as well as the risks of buying them through the Internet;

National Crime Prevention Council (NCPC), Bureau of Justice Assistance (BJA)

"Get Real About IP Theft" public education campaign to raise awareness and understanding of the impact of IP theft on public health, safety, and the economy;

UK Intellectual Property Office (UK-IPO)

"Treasure Island" education campaign to build understanding of and respect for IP in young people in a creative way; includes a combination of online resources, apps and a live tour of Karaoke Shower "MusicBiz" anti music piracy competition inviting 14-18 year olds to create their own storyboard or short film of 90 seconds or less focusing on how songwriters, artists and bands are rewarded for their creativity;

UK Music, the Intellectual Property Office (IPO), Aardman Animations

"Music Inc." app: allows users to take on the role of managing an aspiring musician, designed to give young music fans an insight into the modern music industry and to educate them on specific challenges encountered by artists in the digital age;

3D Chile Comunicaciones

"#ImaginaciónSinMiedos" (Imagination without fear) campaign to promote respect for creativity;

Mobile Manufacturer’s Forum

"Spot a Fake Phone" website, to help consumers spot fake mobile phones and avoid being ripped off;

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