World of IP Round Up

Nestlé’s Kit Kat Shape Mark Registration Breaks Under the Pressure of CJEU Review

There are few trade marks more infamous than the Kit Kat shape mark. This month, after court battles over the past 11 years – the CJEU confirmed it’s earlier opinion that the shape of KitKat had not been proven to have acquired enough distinctiveness across the entirety of the EU to garner an EUTM. (Though it was granted that there was not a requirement to submit evidence for each and every EU member state).

This result has a range of significant implications for non-conventional trade marks which will be explored further in a forthcoming piece from Lakmal Walawage.

Interestingly, enough Mondelez’s assertion that Kit Kat as a shape had not acquired distinctive character in any state of the EU was not proven. Instead it was that a lack of sufficient evidence provided for the entirety of the geographic scope that would be covered by an EUTM, that led to judgment.

This suggests that Nestlé may return in the future with a further consolidated attempt to register the mark.

BBC report on the decision.

Euractiv provide an in-depth detailing of the decision.

Coca-Cola win Energy Drink Colour Mark Case in Australia after Frucor Beverages Registration Mistake

In a decision this month in Australia, Coca-Cola successfully opposed Fucor Beverages’ green colour mark – on the basis that 6 years prior when it was registered, Frucor had attached the incorrect colour swatch.

In addition to this, the Australian court found that the product itself being green, that the colour mark harboured descriptive qualities and as such could not act as a distinctive sign.

The Sydney Morning Herald provide an overview of this judgment.

Ex-Apple Employee Intercepted at Airport and Accused of Stealing Autonomous Vehicle IP

In the latest piece of trade secret litigation coming out of the US, an ex-Apple employee was charged by federal prosecutors for leaving the company with 40GB of IP that was transferred to his wife’s laptop.

This case comes at a time when US and Chinese relations over intellectual property have reached a flash-point.

Wired provided an in depth report on the story.

Nike Lose legal battle of “LDNR” campaign

Nike have lost a legal battle against premium active-wear label LNDR who successfully opposed NIKE’s “Nothing beats a Londoner” campaign.

The vibrant campaign, including such luminaries as Harry Kane and Skepta, was pulled upon the receipt of LNDR’s complaint.

BBC provide an overview of the story.

Drapers offer a more in-depth fashion-centric view.

Changes to UK Trade Mark Registration on the Cards

Whilst Brexit is set to split the judiciary of the UK from the EU in due course – in other quarters, such as IP, further harmonisation has been confirmed.

One area in particular where this has been noted this month are UK The Trade Marks Regulations 2018 which implement the EU’s Trade Mark Directive of 2015 – which will come into force in January 2019.

This will extend the prior limits of what can be registered as trade marks – to those that cannot be represented graphically – amongst a host of other changes.

Out-Law provide an excellent overview of these changes here.

In addition to this, they look more closely at changes to the “own name defence”.

World of IP Round Up: The Best of the Rest


Forget Apple vs Samsung, an even bigger patent war has just begun | @WIRED

AI Holds the Key to Better Trademark Enforcement | @CDOTrends

Scammers abuse net domain languages

Your domain name registrar may have made it impossible for people to contact you

Samsung “Anti SDE” Trademark Suggests New VR Display Tech Coming to Market

“” UDRP: “Is someone trying to steal it from me?” – Domain Name Wire

Will Uber’s CEO still be able to save the brand’s image? @cnntech

Samsung trade mark “Samsung Speckle” in Europe, suggesting a new health offering… @BIUK

OnePlus to trademark “Warp Charge” as possible rebrand of “Dash Charge” |

Walmart to launch Netflix rival under Vudu brand this year, says report | @CNET

If Tesla’s brand is harmed in a material way, it’s ‘over’: Expert | @cnbc

Samsung wants to trademark a magnetic beetle dial and what the heck is it?

Nintendo sues LoveROMs for copyright and trademark infringement | @IPProTI

Samsung Is Launching Its Highly-Anticipated Foldable Phone In 2019 | @designtaxi

Intellectual property in an AI world |

Koei Tecmo’s Patent Lawsuit Against Capcom Dismissed –


Companies need intellectual property strategies which always keep the end-goal in mind @globeandmail

Trademark protection helps innovation and growth new study says

How Aviva’s ‘Digital Garage’ is helping the insurance brand disrupt itself

Imitation: the sincerest form of flattery, or just plain trade mark infringement?

Whisky brand Penderyn set to open site in North Wales

Small pharma defeats big pharma in trademark dispute

Can You Trademark a Color?  @ipwatchdog

What startups need to know about intellectual property | @techworldnews

Truth is Stranger than Fiction: a Deep Dive behind #cockygate from @verge |

How Lagunitas went from a modest kitchen stove to nationwide breweries | @DailyMirror

How your employees can – and must – protect intellectual property |  @globeandmail

How Exhibitors Can Protect Their Intellectual Property at Trade Shows |

Attack of the clones: how Aldi gets away with mimicking big brands |

Trade Secrets Litigation Increasing In Digital Age | @business

How the “step-by-step” test led to different outcomes for Apple’s “Beats” trademark in Singapore and Australia –

72% of CEOs admit they’ve taken intellectual property from a former employer – Help Net Security

Comic-Con IP tussle rumbles on –

Start-up Olaplex triumphs over L’Oréal in court case

International Inc. v OHIM: trade mark protection extended to the concept and sound of ‘France’ | @Ipkat

Mast-Jägermeister takes stake in German gin brand

European Parliament Rejects Starting Negotiations On Copyright Reform Proposal – Intellectual Property Watch

(US) Federal Circuit Finds TTAB Erred In Determining Genericness of Coca-Cola’s “ZERO” Trademarks –

India sees huge surge in Intellectual Property rights applications

Singapore parliament: More powers for customs officers to seize goods that infringe intellectual property rights

Global Innovation Index 2018: China Breaks Into Top 20, US Drops Out Of Top 5 – Intellectual Property Watch

(US) Understanding trademark “fame”

China refutes U.S. allegation on intellectual property issues @XHNews

Yema Auto wins trademark case over Ford “Mustang” Chinese name translation |

Chinese companies rush to register ‘Mbappe’ trademark | @globaltimesnews

[US] Red Hen Confusion Is a Trademark Lesson for All |

Europe plans “leading role” in 3D printing, intellectual property is a challenge |

Golden Knights and U.S. Army settle trademark dispute |

[US] Texas A&M Wins Trademark Suit Against Soap Company In Washington State By Playing Six Degrees Of Trademark Licensing

Saint Lucia hosts World Intellectual Property Organisation Meeting |

The AG Opinion in Levola Hengelo: more questions than answers? |

US intelligence says China’s intellectual theft continues albeit at “lower volumes” –

[US] Cannabis Industry Seeks Clarity in Intellectual Property Haze

At Home

Piracy level downs among younger consumers, reckons IPO stats pack  | Complete Music Update

Brexit: trade marks and designs – 10 things to know

Trump trademark win after latest attack of Britain’s corporate clones

Trademark applications in the UK double since 1995 | @ipproti

Intellectual Property Office to become member to UK Anti Illicit Trade group |

The Rights And Wrongs Of IP Protections @LawNewsUK

IP firm “Cloch” fails in bid to trade mark the word “loch” | @heraldscotland

Government gives further reassurance of EU trade marks in the UK |


How Lululemon and Under Armour are saving the fashion industry | LinkedIn

A history of the bikini, a beloved innovation in fashion design

Gordon Brothers Acquires Bench Brand and Related Intellectual Property

Air Jordan sneaker doc is a brand story that’s not branded content

America’s 15 most valuable fashion brands are worth nearly $70 billion combined — but one company dominates

Amazon and its private labels: the once and future “frenemy” of brands?

These are the most counterfeited trainers in the world. Here’s why

Kroger Is Launching Its Own Fashion Brand

How Two Young Ukrainian Revolutionaries Launched A Successful Fashion Brand

Fashion Lawyer Julie Zerbo Explains the Laws Behind Bootlegs

First Images Of ‘Game Of Thrones’ x adidas’ Rumored Collaboration Have Surfaced –

Uniqlo, Rakuten test brand power overseas | @japantimes

After Recent Success in Europe, the Heel Turns: Christian Louboutin’s Red Sole is Not a Valid Trademark in India |

Helly Hansen sues Off-White for trademark infringement | @FashionUnited

Kim Kardashian’s KKW Fragrance Co. is Being Sued for “Intentionally Copying” Another’s Trademark | @TheFashionLaw

Charlotte Rogers: Burning clothes is a bad move for Burberry’s brand – Marketing Week

The concert T-shirt has a new competitor – restaurant merchandise |

Eminem’s Clothing Trademark Contested by Similarly Named Detroit Retailer | @billboard

Design and Branding

Best Global Brands 2016 @Interbrand

Losing Your Brand Identity: How To Commit Trademark Genericide Without Really Trying

How To Make Your Brand Stand Out Like Big Brands |

How Nike & Reebok Branded Their Websites In Accordance With Their Logo Designs

Absa has trademarked a new logo

Executing An Experience: Maintaining Brand And Product Quality On An International Scale

Are telecoms companies losing the brand battle?

With Schultz Out, Starbucks Must Consider These 5 Elements of Its Brand Story

‘IHOb’ Is Now Back To IHOP, Says Rebrand Was All Part Of Clever Marketing Stunt –

The 10 Brands Gen Z & Millennials Trust Most | @Ypulse

Logo Mania Returns: Branding for the Instagram Generation |

How to ensure your brand survives through 2020 |

McDonald’s CEO: We are not trying to take the brand upmarket


World Cup mania a boon for counterfeiters |

Anyone for tennis? Serving the Wimbledon brand – Intellectual Property Office blog

Conor McGregor wants to be ‘The Green Back’ for Europe

Roger Federer fans could be left fuming if Nike make this UNIQLO decision  –

Adidas, Three, Budweiser, Snapchat: even more World Cup brand action

Jimmy Buffett Cashes in on ‘Margaritaville’ Brand With Restaurants, Spirits, More

Oprah Winfrey gets frank in motion to throw out ‘frivolous’ lawsuit claiming copyright infringement

Snoop Dogg takes down opponent in UK trademark dispute | @IPProTI

Company sues Taylor Swift for allegedly stealing business name | @newyorkpost

Now it looks like Disney will acquire Fox – what will the Marvel MCU look like with Fox’s IP? |

Road Rover Rumors Fueled By Recent Trademark Filing |

Everything Else

Epic and Eddyline Breweries Settle Nasty Trademark Dispute | @DenverWestword

Volvo announces M mobility brand to rival Volkswagen’s Moia |

Enforce Your Trademarks Now Or You Might Be The Next Red Hen

Nintendo Trademark Sparks GameCube Classic Edition Rumor

The Evolution of Bicycles: A Patent History –

Historic beer brand to return to city

[US] Pierogi festivals settle over trademark dispute

UKIPO dismisses Mango trademark appeal | @WorldIPReview

Protecting Intellectual Property: An Important Step for Pet Brands |

Cat Fight! How These Inventors Beat the Counterfeiters That Nearly Destroyed Their Company.

[USA] Trademark troll who claims to own “Dragon Slayer” now wants exclusive rights to book covers where someone is holding a weapon | @BoingBoing