Trade marks Archive


  • gTLD seminar to be held in Brussels on June 22

    May 31, 2012

    Managing IP is sponsoring a seminar on new gTLDs, to be held in Brussels on June 22, immediately before the Icann meeting in Prague

  • Comité Colbert collaborates with Cartier, Chanel, other luxury brands on anti-counterfeiting campaign in French airports

    May 30, 2012

    French industry organisation Comité Colbert has teamed up with Cartier, Chanel, Christian Dior, Lacoste, Longchamp, Van Cleef & Arpels and Louis Vuitton to launch an anti-counterfeiting campaign targeting tourists in search of discount French designer brands

  • Colombia joins Madrid Protocol on trade marks

    May 30, 2012

    Colombia has deposited its instrument of accession with WIPO as part of the process to join the Madrid system on international trade mark registration

  • Apple loses appeal against staying Samsung Galaxy non-infringement claim

    May 30, 2012

    The Court of Appeal in London has ruled that Samsung’s claim for a declaration of non-infringement of an Apple design by its Galaxy tablet need not be stayed

  • ACTA faces three EU Parliament votes this week

    May 30, 2012

    Three committees in the European Parliament are due to vote this week on the controversial anti-counterfeiting treaty ACTA

  • Icann will reveal new gTLD applications on June 13

    May 30, 2012

    The names of all the gTLD strings that have been applied for in Icann’s new gTLD programme will be revealed on June 13

  • Is Shazam’s trade mark in danger of becoming generic?

    May 30, 2012

    Last week a marketing manager at music discovery service Shazam told a journalist it’s a “good thing” when people use her company’s brand name as a verb. But should she be more worried about the trade mark becoming generic?

  • Jams Arbitration loses UDRP case in ruling over gripe sites

    May 29, 2012

    Arbitration services-provider Jams failed to win the site jamsarbitration.com in a WIPO UDRP case today, which centred on the panel’s approach to so-called gripe or sucks sites

  • Euromoney LMG Europe Women in Business Law Awards 2012

    May 29, 2012

  • Google, digital archery, WIBL Awards, Anshika Jha and Java: Quiz of the week May 21-25

    May 28, 2012

    The answers to all this week’s questions can be found in articles published on managingip.com in the past week

  • What’s on this week

    May 28, 2012

    Managing IP lists the IP decisions, meetings and events taking place this week

  • Icann addresses new gTLD questions

    May 25, 2012

    Icann will publish details on Tuesday of the new gTLD schedule, including the digital archery program and the reveal date for applications

  • Inaugural Americas Women in Business Law Awards: Winners announced

    May 25, 2012

  • Bunny case sets high threshold for CTM distinctiveness

    May 24, 2012

    The Court of Justice of the EU has confirmed that applicants for Community trade marks must show that they are distinctive throughout the EU, ruling in a case involving the Lindt chocolate bunny

  • Formula 1 in pole position after CJEU appeal

    May 24, 2012

    Trade mark owners in Europe received a boost today after the Court of Justice of the EU overturned the General Court’s decision in a case involving the F1 mark

  • Gucci bests Guess in trade mark fashion case

    May 23, 2012

    Gucci America won a trade mark infringement battle with fashion company Guess on Tuesday, when a New York court awarded the company just over $4.5 million in damages

  • UK appoints IP attaché to India

    May 22, 2012

    Anshika Jha will be based in the British High Commission in New Delhi and work with representatives from UK Trade and Investment and the Foreign Office to help British businesses operating in India

  • Managing IP’s guide to Lindt's chocolate bunny dispute

    May 22, 2012

    On Thursday the Court of Justice of the EU will end a long-running battle by a Swiss chocolate maker to protect the shape of its chocolate rabbits. Its ruling should clarify how OHIM should measure a trade mark’s distinctiveness. Here’s a guide to the dispute so far

  • Customs officers sanction grey market goods

    May 21, 2012

    A circular from India’s Central Board of Excise and Customs has advised Customs officers that parallel imports do not violate the Trade Marks Act and that they should allow the products through

  • Quiz of the week May 14-18

    May 21, 2012

    How much attention have you been paying to IP developments in the past week? Test your knowledge with Managing IP’s news quiz

  • Stichting BDO loses mark in row over well-known status

    May 21, 2012

    An international accounting firm has lost its trade mark in the Philippines in a dispute focusing on its well-known status and prior use of the mark by a rival

  • What's on this week

    May 21, 2012

    Managing IP lists the IP meetings, decisions and events taking place this week

  • Icann appoints independent objector to review gTLDs

    May 17, 2012

    Icann has selected Alain Pellet as the independent objector for the global top level domain (gTLD) selection program

  • Interview: Ricardo Blancaflor, Philippines IP Office

    May 15, 2012

    The Philippines' decision to join the Madrid Protocol will be good for businesses, says Blancaflor, in an exclusive interview. Law firms need to realise that their clients pull the strings

  • Interview: Rosa Wilkinson, innovation director at the UK IPO

    May 15, 2012

    Rosa Wilkinson joined the IPO in September last year after working with UK Trade and Investment and Lloyds Bank, where she served as director of public policy and regulation. She tells Emma Barraclough about her IP role

  • Court dodges aesthetic functionality in Maker’s Mark case

    May 14, 2012

    A US appeals court last week declined to answer whether aesthetic functionality is a valid defence to trade mark infringement

  • Why the latest eBay ruling has an upside for IP owners

    May 14, 2012

    France’s highest court has ruled in the latest round of a battle between online auction site eBay and luxury goods company LVMH

  • Quiz of the week – INTA Annual Meeting 2012

    May 14, 2012

    This week’s IP quiz questions all relate to last week’s INTA Annual Meeting in Washington DC. How many can you answer?

  • What’s on this week

    May 14, 2012

    Managing IP lists the IP conferences, decisions and meetings taking place this week

  • Tax planners see advantages in Singapore

    May 11, 2012

    Is Singapore the most tax-friendly location for holding IP rights? According to speakers at a seminar in Hong Kong today, it might be

  • Maximize protection in Africa

    May 09, 2012

    An INTA Annual Meeting panel today will discuss the best strategies for protecting your marks in Africa, as James Nurton discovers.

  • Interview Scott Paintin, Western Union

    May 09, 2012

    Scott Paintin is in charge of protecting intellectual property for Western Union, including the Washington D.C.-based Travelex Global Business Payments. James Nurton spoke to him.

  • A year in trademarks: Functionality, dilution… and goats

    May 09, 2012

    The Trademark Reporter authors John Welch of Lando & Anastasi and Theodore Davis of Kilpatrick Townsend & Stockton will highlight some of the key matters in a number of areas that are shaping trademark law today. Eileen McDermott reports.

  • Making your mark the nontraditional way

    May 09, 2012

    There are signs that it is becoming easier to register nontraditional trademarks. But how useful are they for brand owners? A session at today's INTA Annual Meeting compares practice in China, Europe and the United States, reports Emma Barraclough.

  • Why ambush marketing is winning

    May 09, 2012

    For now, ambush marketing is winning. Not because the law isn’t strong enough to prevent brands from hijacking physical events, but because the media by which consumers watch those events has broadened so much.

  • Plan your brand extension

    May 09, 2012

    Lawyers whose clients want to extend their brand need to ask themselves four key questions, said John Joseph Cheek, Caterpillar Inc., at a session during the INTA Annual Meeting yesterday.

  • INTA Annual Meeting speakers discuss GIs and Italian food

    May 09, 2012

    “We now hand over to Paola Gelato of Studio Legale Jacobacci to talk about geographical indications in Italy. And I warn you, anyone that skipped lunch is going to find this difficult,” said chair Jaroslaw Kulikowski of Kulikowska & Kulikowski in Poland in yesterday’s session, Appellations d’Origine: Made in Europe. And so it proved.

  • Beware unregistered marks in the EU

    May 09, 2012

    Companies outside Europe could be forgiven for thinking that trademark law around the EU is relatively harmonized, given the EU-level directives and Community trade mark system. Attendees at the Regional Update session on Europe yesterday were reminded, however, that that is not the case with unregistered marks.

  • Annual Meeting attendees get a pan-Asian lesson in fighting fakes

    May 09, 2012

    TV shows called Surfer Dudes and Bull Run, an actor named Crad Ditt and an apparel business called Lami: a recipe for financial success or a trademark law headache?

  • INTA Annual Meeting attendees flock to discuss keyword ads

    May 09, 2012

    More than 1,400 attendees crowded into a session on keyword advertising yesterday, where Rosetta Stone counsel John Ramsey and other panelists shared their frustrations about the issue and also faced tough questions about the proper legal approach.

  • ICANN offers gTLD refund

    May 09, 2012

    ICANN’s Board has decided to offer a full refund to any gTLD applicant that withdraws its application before the applied-for new strings are revealed.

  • INTA’s Unreal campaign challenges teens

    May 09, 2012

    “Who has downloaded music?” asked Christopher Robertson of U.S. Customs and Border Protection. “I promise I’m not going to take any names.” At this, nearly everyone raised a hand. The better question, perhaps, was who hadn’t illegally downloaded music.

  • When the content is the trademark

    May 08, 2012

    In 2000, a bookstore owner in the UK found a poster in the shop with the words “Keep Calm and Carry On.” The owner hung it in the store and, when customers inquired about it, began selling copies. Since then, the phrase and the lone graphic—the crown of King George VI­­—have become iconic. Others have even registered the phrase as a trademark.

  • INTA roundup: President’s speech, gTLDs, trolls and Eskimos

    May 08, 2012

    A summary of yesterday's sessions at the INTA Annual Meeting

  • Interview: Julie Alexa Strauss, Feld Entertainment

    May 08, 2012

    Julie Alexa Strauss of Feld Entertainment describes her love of live entertainment, the battle to enforce trademark rights, and why she wants outside counsel to understand her business.

  • Former Estee Lauder chair tells INTA sea stories

    May 08, 2012

    “In the Navy you don’t learn from textbooks, you have sea stories instead,” Leonard A. Lauder told attendees in his keynote speech at the opening ceremony yesterday. The Chairman Emeritus of The Estée Lauder Companies, Lauder joined his parents’ company in 1958 when he left the US Navy. “I looked pretty sexy in that Navy uniform,” he remembered.

  • The changing face of ambush marketing

    May 08, 2012

    Events organizers need to stay one step ahead of ambush marketers if they want to protect their brands and keep their sponsors happy. Emma Barraclough explains how they are meeting the challenges of the social media revolution.

  • Stop diluting dilution law

    May 08, 2012

    When the Trademark Dilution Revision Act became law in 2006, U.S. trademark owners were triumphant.

  • How to land a job in a tough climate

    May 08, 2012

    Be judicious about your use of social networking sites such as LinkedIn, don’t claim to be proficient at something unless you are and avoid declaring that you are passionate about areas of the law if you aren’t, or if you don’t have the evidence to support your claim.

  • Making the most of INTA committees

    May 08, 2012

    INTA members got a lesson in how not to make the most of the organization’s network of committees on Sunday, with panelists running through many of the don’ts of committee leadership to highlight what would-be committee chairs should do instead.

  • Freedom of speech or a violation of the right of publicity?

    May 08, 2012

    In advance of today’s session on trademarks and publicity rights, Karen Bolipata looks at the evolution of the law on the use of brands and celebrities in expressive works.

  • Speed networking event still impresses

    May 07, 2012

    Cheryl Black pretended to collapse on a table. “Maybe 18?” she said. “Wow, 18 people in one hour. That’s why I’m tired.”

  • To tweet or not to tweet: advice on social media

    May 07, 2012

    There is a big misconception about Twitter, said the company’s Global Brand Protection Manager, Jillian West, during yesterday’s In-house Practitioners Workshop.

  • Let your body do the talking: advice on body language

    May 07, 2012

    Do you want to seem more powerful? Try grabbing your chin thoughtfully. More intelligent? Tilt your head to the left. More attractive? Tilt your head to the right. Whatever you do, don’t grab the skin on your neck when addressing someone.

  • Extend your brand's reach

    May 07, 2012

    More brand owners than ever want to cash in on the value of their trademarks by extending them to products and services in new sectors. Emma Barraclough weighs up the risks and benefits.

  • How to harness social media

    May 07, 2012

    Facebook and Twitter are becoming more important for trademark counsel every day, yet the law is still uncertain. Simon Crompton explains how a hypothetical consumer product could produce some useful recommendations.

  • Advice on protecting unregistered marks in India, Pakistan and the Middle East

    May 07, 2012

    The speakers on tomorrow’s panel on India, Pakistan, and the Middle East will talk about protecting unregistered trademarks, and the groundwork that brand owners need to lay down to defend their marks. Peter Leung reports.

  • When indigenous rights clash with trademarks

    May 07, 2012

    How best to protect indigenous rights has become a top issue for WIPO, INTA and, increasingly, governments around the globe. Eileen McDermott examines some of the key priorities.

  • Getting your message to Congress

    May 07, 2012

    With IP issues front and center in Congress, attorneys need to know when their stance on a particular topic may be crossing the line into the highly regulated world of lobbying. Eileen McDermott and Patrick Ross explain.

  • Who are you calling a troll?

    May 07, 2012

    As with patents, where the concept of trolling in intellectual property began, there is much disagreement over who qualifies as a trademark troll. But one thing is certain, says Simon Crompton: it is now a trend, and one that the speakers in today’s session believe lawyers need to take seriously.

  • Making—and keeping—your mark in Asia

    May 07, 2012

    Emma Barraclough explains why linguistic and legal differences make it so important to understand the requirements for trademark use in Asia.

  • Three ways to beat counterfeiters

    May 07, 2012

    Frustrated with traditional approaches, some brand owners are succeeding with new anticounterfeiting strategies. James Nurton spoke to Jennifer Hamilton of Major League Baseball about three recent developments.

  • Protect your rights in Europe

    May 07, 2012

    With a single market of 500 million people across 27 countries that some of the world’s richest consumers call home, it is unsurprising that brand owners want to boost their presence in the European Union marketplace. But protecting their trademark rights there can be a tricky business.

  • It’s the Internet, stupid!

    May 07, 2012

    New gTLDs, social media, keyword advertising… it is impossible to avoid the trademark issues raised by the Internet. James Nurton explores the latest developments.

  • Three new ways to manage Madrid

    May 06, 2012

    Yesterday’s Madrid System Users Meeting saw more than the usual announcements and update on the international trademark system. It marked the launch of three new online services by WIPO.

  • A practical approach to teaching law

    May 06, 2012

    Law students can spend entire semesters in class without ever hearing the word “client.”

  • Round the world in two days

    May 06, 2012

    The Academic Course is a series of introductions to basic trademark law and practice around the world. But that doesn’t mean everyone in the audience is a novice

  • INTA members boost their mediation skills

    May 06, 2012

    A multinational group of trademark professionals met yesterday to hone their mediation skills by working through a series of role plays. But they were taken out of their comfort zone with dispute scenarios where brand names weren’t at stake

  • INTA co-chairs: Make the most of the Annual Meeting

    May 06, 2012

    If this year’s Annual Meeting co-chairs could give first-time attendees only one piece of advice, it would be these two words: Pace yourself

  • Will there be 2,000 gTLDs?

    May 06, 2012

    There were more than 2,000 applications for new generic top-level domains (gTLDs) before the system was taken offline on April 12, ICANN said on Friday night

  • Interview: Michael Wu, Rosetta Stone

    May 03, 2012

    Karen Bolipata speaks to Michael Wu, General Counsel and Corporate Secretary at Rosetta Stone, about its pending search engine advertisement litigation and the company’s battle to protect its brands online.

  • Meet your match at speed networking

    May 03, 2012

    Dress your best and develop a pitch to impress if you want to make the most of a unique networking opportunity being offered at this year's Annual Meeting

  • Academic Day: From classroom to courtroom

    May 03, 2012

    In a world of silos and ivory towers, INTA’s Academic Day aims to bridge the gap between professors and practitioners, providing both with plenty of opportunities to learn from each other. Emma Barraclough reports.

  • Kit building: INTA's Volunteer Service Project

    May 03, 2012

    Karen Bolipata learns out about this year’s INTA Volunteer Service Project, which took place yesterday.

  • Interview: Deborah Cohn, USPTO

    May 03, 2012

    Deborah Cohn became the USPTO’s Commissioner for Trademarks in 2011. She spoke with Eileen McDermott about her priorities for the Office, both at home and abroad.

  • A world of news at the Annual Meeting Grand Finale

    May 03, 2012

    Ever wanted to see Pulitzer Prize-winning photographs, the Berlin Wall and the Unabomber's hut, all under one roof?

  • Next stop for INTA: Dallas, then Hong Kong

    May 03, 2012

    Every Annual Meeting is special, but INTA is particularly excited about the next two Annual Meetings in Dallas, Texas, USA and Hong Kong, as it will be their first time in each city

  • Interview: Sarah Deutsch, Verizon

    May 03, 2012

    Sarah Deutsch’s role at Verizon has changed over the 21 years she has been there, with the rise of the Internet and a series of corporate changes, as she explains to James Nurton

  • Profile: INTA President Gregg Marrazzo

    May 03, 2012

    INTA President Gregg Marrazzo is charged with protecting some of the biggest names in makeup, fashion and fragrance. He spoke with Eileen McDermott about curbing counterfeits post-SOPA, combating “anti-IP sentiment,” and the origins of his trademark romance.

  • New INTA programming for 2012

    May 03, 2012

    INTA has developed several new features and programs for members. Here are some of the things the Association has in store.

  • David Warr explains INTA’s work in Washington

    May 03, 2012

    Turn right out of the Convention Center, walk five blocks down M Street, take a right on to Connecticut Avenue and walk up as far as the statue of Doctor John Witherspoon. Congratulations: you've just arrived at INTA's latest office location

  • INTA campaign targets teens

    May 03, 2012

    On Tuesday, INTA will unveil a consumer awareness campaign aimed at educating teenagers about the potential harms and risks of counterfeit goods

  • Annual Meeting attendance set to be highest ever

    May 03, 2012

    More than 9,300 attendees registered online for this year's Annual Meeting. With more expected to register onsite, this Annual Meeting is set to be the best-attended INTA event ever

  • Madrid System set to expand

    May 03, 2012

    In the past month the Madrid System for international trademark registration received a big boost with the Philippines joining in April and Colombia and Mexico on the cusp of becoming members

  • KIPO welcomes new commissioner

    May 03, 2012

    President Myung-bak Lee has appointed a new Commissioner, Ho-won Kim, to head the Korea Intellectual Property Office. Kim’s term began on May 1

  • Over 100 companies had gTLD applications exposed

    May 03, 2012

    In its latest update on the breakdown of the gTLD process, Icann has said that it estimates 105 applicants had their file names and user names viewed by others

  • Dot-eu domain names likely to be revoked

    May 03, 2012

    The Advocate General in the EU has said that Gevers and other firms should not have been able to register .eu domains for clients, as they do not qualify as licensees

  • It’s s301 time: here’s who’s up, and who’s down

    May 01, 2012

    The US government has published its annual list naming and shaming countries that it claims have failed to protect the IP rights of its citizens and companies

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