Perspectives

“This development will be a big blow to Nestlé since it will likely lose its EU trademark for the fourfinger chocolate bar. The battle for recognition of the distinctiveness of the four-finger chocolate bar has been ongoing for 16 years. In the latest twist, the Court of Justice of the European Union (CJEU) has ruled that the EUIPO must again consider whether the four-finger bar is sufficiently distinctive such that a consumer would automatically recognise it as a KitKat – without the words, logo or wrapper. The case demonstrates the difficulty that manufacturers have in obtaining trademark protection for shape marks. It is not impossible – shape marks have been obtained for other confectionery products such as Toblerone and Nestlé’s Walnut Whip, although these are arguably more distinctive in shape.”

Claire Lehr, partner and head of trademarks at EIP Europe, reflects on the CJEU’s ruling that the EUIPO must reconsider whether Nestlé’s four-finger threedimensional KitKat shape can be retained as an EU trademark (25 July 2018)

“In the very beginning, adoption of the Madrid Protocol led to significantly less filing work and we struggled. But while it was awful in the beginning, two years later we receive so many provisional refusals that we have recovered and it has turned into a very interesting volume of work.”

Mexico-based Laura Collada, managing partner at Dumont, reflects on the country’s 2013 implementation of the Madrid Protocol (24 July 2018)

“The seemingly ‘simple’ act of registering a trademark requires legal analysis in dozens of different ways. From the filing basis to ownership issues to proof of use – every step of the prosecution process has the ability to drastically affect the application and, more importantly, the resulting registration. Despite what many ‘$99 trademark filing specials’ online would like trademark owners to believe, each filing has its own unique challenges; and failure to understand and appreciate those challenges can be catastrophic for a trademark owner in the long term.”

Eric Perrott, trademark and copyright attorney at Gerben Law Firm, backs the concept of a USPTO policy change that would require applicants from outside the United States to hire US counsel (or an authorised practitioner) to prosecute their applications (24 July 2018)

“Burberry has careful processes in place to minimise the amount of excess stock we produce. On the occasions when disposal of products is necessary, we do so in a responsible manner and we continue to seek ways to reduce and revalue our waste. This is a core part of our responsibility strategy to 2022 and we have forged partnerships and committed support to innovative organisations to help reach this goal.”

A Burberry spokesperson speaks to World Trademark Review following a social media furore over reports that the company destroyed almost £30 million-worth of finished goods bearing its trademark over the past year in a bid to protect the luxury fashion brand from counterfeiting (20 July 2018)

“UK-owned trademarks and design rights in the EU27 will be unaffected by our withdrawal. Meanwhile, we have agreed to protect all existing EU trademarks, Community-registered designs and unregistered designs in the United Kingdom as we leave the European Union. In place of those EU-level rights, 1.5 million new UK trademarks and registered designs will be granted automatically and for free.”

Robin Walker, parliamentary undersecretary of state for exiting the European Union, clarifies the UK government’s position on the treatment of trademarks post-Brexit (19 July 2018)

“INTA is extremely disappointed with WTO’s ruling upholding Australia’s plain packaging law. Given the importance to brand owners, trademark professionals, and society, the Association is studying the WTO report in-depth to determine next steps.”

INTA reacts to the news that – in a landmark ruling – the World Trade Organisation has upheld Australia’s tobacco plain packaging regime as being consistent with the organisation’s trade obligations (29 June 2018)

“This rise of intellectual property self-help is surprising in light of the existing legal literature on law and norms... The phenomenon we identify shows that digital culture has unleashed the possibility of circumventing law in the complete absence of any discrete community... In our view, intellectual property self-help is here to stay whether we like it or not.”

Taking Intellectual Property Into Their Own Hands, authored by the New York University School of Law’s Amy Adler and Jeanne C Fromer, evaluates the rise of so-called ‘intellectual property self-help’, whereby content creators and rights holders shun cease and desist letters, takedown requests and litigation in favour of tactics such as social media shaming and appropriation (18 June 2018)