Bird & Bird's BrandWrites December 2015

By Nick Aries, Lorraine Tay



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Community Trade Marks will usually require use in more than one member state, says UK Court 

A recent Intellectual Property Enterprise Court (IPEC) ruling illustrates the risk of businesses losing Community Trade Mark (CTM) protection where they are deemed to have used the mark solely in one EU member state.

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Border enforcement in Singapore – being prepared for the upcoming ASEAN Economic Community

Due to strict legal deadlines in the border enforcement process, the appointment of a local agent, particularly where multiple licensees are present in the jurisdiction, is beneficial for brand owners and licensees.

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Reform of the CTM system: What you need to know 

2016 will see the introduction of a new Trade Marks Directive and Regulation, resulting in a number of important changes to the Community Trade Mark system, including fee reductions and new names. Here we highlight the key points. 

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Parody trade marks: a take-off not a rip-off 

Oliver Smith looks at what qualifies for a successful brand parody and what doesn't with the Target vs Tar Jay case study from Australia.

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International brand expansion – Q&A on Middle East trade mark protection

Melissa Murray, Sahar Tarhini and Sau Lin Haouache answer some common brand owners' questions on expansion to the Middle East. 

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Trade mark protection for product shapes – what’s the current state of play, and how could it change in the future?

Whilst design law might seem the obvious starting point for protecting product shapes, in the right circumstances trade mark protection will also be available. This is a big draw for brand owners due to the potential unlimited duration of trade marks compared with designs. This article takes stock of recent shape mark decisions from the EU Court of Justice (CJEU), before looking at the legislative reforms on the horizon.

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Interflora “AdWords” infringement claims wilt in France

The Paris Court of First Instance has recently dismissed Interflora’s claims based on the use of its trade mark as a keyword by a competitor on the Google “AdWords” service.

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Hong Kong shadow companies are increasingly being used to engage in counterfeiting and other infringing activities in China

Hong Kong-registered shadow companies have long been the scourge of brand owners and are increasingly being used as vehicles to trade off brand owners’ reputations in mainland China. However, effective monitoring and timely action in both Hong Kong and the mainland can help counter the problem.

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Can’t PLAY with colour in a Polish Court

A recent Polish Supreme Administrative Court decision has provoked debate about how acquired distinctiveness should be understood in trade mark applications for a colour ‘per se’.

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Spanish criminal reform gets tough on intellectual property crimes

In 2014 counterfeit goods seized in Spain totalled €177m. Perhaps this was a contributing factor to the Spanish Executive Power approving a new Criminal Code, raising the penalties for intellectual property crimes. Significant changes to the Criminal Procedure Act will also have an impact on activities within the ‘black market’.

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Focus on Fashion – Beulah London

Beulah London is a luxury fashion brand with a focus on British design, heritage and the empowerment of women. Founded in 2010, Beulah London has gained international acclaim for its chic, cosmopolitan womenswear and as a luxury brand with a social conscience. Hilary Atherton from our London office put some questions to Lavinia Brennan, co-founder of Beulah London…

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Brand watch

A snapshot of what’s happening in the world of trade mark law and recent topical decisions.

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Industry news
  • Brand Heritage – a thing of the past?
  • Interbrand’s 100 Best Brands index: tech giants lead the way

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Lorraine Anne Tay

Joint Managing Partner

Call me on: +65 6534 5266
Nick Aries

Nick Aries

United States

Call me on: +1 415 231 6568