World Trademark Review Yearbook 2016/2017

A simple, easy-to-use digest of trademark regulation in key jurisdictions across the globe.

Introduction

Brand owner advocacy

International Trademark Association

As the leading advocate for the interests of brand owners, the International Trademark Association (INTA) is constantly working to foster effective trademark laws and policies worldwide. As an INTA volunteer, board member and, in 2015, president, I have had numerous opportunities to work intimately on a number of issues that are pertinent to our industry and our practice.
J Scott Evans

Consistency and continuity: the true voice of brand owners

MARQUES

MARQUES, the European Association of Trademark Owners, is recognised in the IP community as an authoritative voice for brand owners in Europe and beyond.
Uwe Over

Regional focus

Community trademark litigation before the European courts

BEST Rechtsanwälte

Community trademarks are subject to court proceedings at both national and EU level. National Community trademark courts designated by EU member states have exclusive jurisdiction over infringement actions relating to Community trademarks, while the General Court and the European Court of Justice rule on administrative decisions relating to Community trademarks issued by the Boards of Appeal of the Office for Harmonisation in the Internal Market (OHIM).
Udo Pfleghar and Steffen Schäffner

Special focus

Strengthening trademark protection through copyright

Fish & Richardson PC

In the United States, brand owners traditionally protect their logos under the Lanham Act by obtaining trademark registration protection from the US Patent and Trademark Office and employing trademark law principles to combat infringement. When one thinks of well-known logos, trademarks such as the Nike swoosh and the Target bulls-eye logo immediately come to mind.
Kristen McCallion and Cynthia Johnson Walden

Plain packaging: impending hardship for brand owners?

Romero Corral Abogados

Several Latin American countries have proposed the introduction of plain packaging for products such as cigarettes, replacing packaging bearing the trade dress that differentiates such products. However, strict regulations limiting the use of trade dress by rights holders already apply to such products and the proposals go beyond these regulations.
Alfredo Corral Ponce

The impact of technology on brands

Thomson CompuMark

Think for a moment about how profoundly technology has changed the brand landscape. Just a couple of decades ago, companies looking to reach a national audience would have to spend millions on television and print advertising, direct mail or catalogues.
Ronda Majure

Protecting rights at the borders: a global strategy

Zacco

The global trade in counterfeit and pirated goods is more than just an ever-present nuisance for rights holders, legitimate businesses and consumers – it is a threat to public health, economic growth and global legitimate trade.
Thomas Mølsgaard

Country chapters

Austria

CMS Reich-Rohrwig Hainz

In Austria, trademarks are governed by the Trademark Protection Act (BGBl 260/1970), which implements the EU Trademarks Directive (89/104/EEC).
Egon Engin-Deniz

Brazil

Bhering Advogados

In Brazil, trademarks are governed by the Law on Industrial Property (9,279/1996). The protection of Olympic symbols and terms is provided for in the Pelé Law (9,615/1998) and, in regard to the 2016 Olympic Games in Rio de Janeiro, the Olympic Act (12,035/2009) confers additional protection on the symbols and expressions associated with the games.
Philippe Bhering

Canada

Bereskin & Parr LLP

In March 2014 the federal government introduced major amendments to the Trademarks Act – designed to facilitate implementation of the Nice Agreement, the Singapore Treaty and the Madrid Protocol – in Bill C-31. However, Bill C-31 also contains fundamental changes to the current trademark legislation, including the elimination of use as a registration requirement.
Cynthia Rowden, Susan Keri and Tamara Céline Winegust

Chile

Estudio Villaseca

Trademarks are governed in Chile by the Industrial Property Law (19.039) (in force since September 30 1991, modified by Law 19.996, in force since December 14 2005) and Law 20.160 (in force since January 2007, regulated by Decree 236, published on December 1 2005 and modified by Economy Decree 36 of May 23 2012). In February 2012 Law 20.569 for standardising the process of trademark and patent applications and implementing the Trademark Law Treaty in Chile came in force.
Sergio Amenábar V

China

China Patent Agent (HK) Ltd

The holder of an unregistered mark has the right to use a trademark, no matter whether it is registered. However, if a mark is to be used on tobacco products, it must be registered.
Johnson Jiang Li and Justin Tao Jiang

Cyprus

Michael Kyprianou & Co LLC

Owners of unregistered marks have no right to file an infringement action: in practice, nobody can institute proceedings to prevent or recover damages for the infringement of an unregistered trademark. However, owners of unregistered marks are free to bring a passing-off action against any party which passes off its goods as those of the rights holder and to seek remedies in respect thereof.
Ermioni Pavlidou

Czech Republic

PATENTSERVIS Praha, as

The Czech Republic is a member of the World Intellectual Property Organisation (WIPO) and party to the following multilateral international treaties concerning trademark protection:
Jana Remišová

El Salvador

Romero Pineda & Asociados

Trademarks registered previously are subject to opposition on renewal; in contrast, trademarks registered under the 2002 law are not published on renewal. Marks are protected for 10 years, renewable every 10 years.
José Roberto Romero

Finland

Borenius Attorneys Ltd

The above-listed national statutes also implement the relevant EU directives. EU regulations apply directly.
Lasse Laaksonen, Marianne Hollands and Ben Rapinoja

France

PROMARK

French trademarks are governed mainly by Law 1991-7, which implements the EU First Trademarks Directive (89/104/EEC) and is codified in the Intellectual Property Code.
Alain Berthet, Bénédicte Devevey and Nicolas Moreau

Germany

COHAUSZ & FLORACK

The following are enforceable in Germany: German trademarks, Community trademarks (CTMs), German trademarks based on international registrations, names and non-registered trade designations.
Erik Schäfer and Ulrike Alice Ulrich

Greece

Dr Helen G Papaconstantinou and Partners

Unregistered signs can constitute relative grounds for refusal and are protected under Articles 13 to 15 of the Law on Unfair Competition. In particular, protection is offered to signs that are deemed to have become a distinguishing feature of the goods or services that they cover.
Fotini Kardiopoulis, Miranda Theodoridou and Dimitra Nassimpian

Iceland

Arnason Faktor ehf

An unregistered mark which otherwise fulfils the requirements for protection under trademark legislation will, through use, enjoy the same protection as a registered mark. Such exclusive rights in an unregistered mark arise when use of the mark commences in trade in Iceland for goods or services.
Asdis Magnusdottir and Bylgja H Björnsdóttir

India

Anand and Anand

In India, trademarks are protected through a combination of both specific statutes (eg, the Trademarks Act 1999) and ancillary legislation incorporated under, for example, the Customs Act 1962 and the Companies Act 1956.
Safir Anand, Revanta Mathur and Madhu Rewari

Israel

Pearl Cohen Zedek Latzer Baratz

While the Trademark Ordinance predominantly provides protection for registered trademarks, it also protects unregistered well-known trademarks.
Nachman Cohen-Zedek, Dor Cohen-Zedek and Anat Mandel

Japan

Nishimura & Asahi

The Trademark Law and its related regulations govern the registration and protection of trademarks in Japan. In addition, the Unfair Competition Prevention Law protects well-known trademarks, both registered and unregistered, as well as certain configurations of goods, from unauthorised use.
Hitomi Iwase, Tamao Shinbo and Shinichiro Hara

Mexico

Uhthoff, Gomez Vega & Uhthoff SC

Article 28 of the Constitution provides the basis for the main IP laws. The Industrial Property Law, as amended on April 9 2012, is the statute governing trademarks and other industrial property rights.
Eryck Armando Castillo Orive and Jimena Chi Barrales

Philippines

Hechanova & Co Inc

In the Philippines, the rights to a mark are acquired through registration under the IP Code. Nevertheless, the owner of an unregistered trademark can file an action for unfair competition with reference to the passing off of the goods or business of one party as the goods or business of another with the intention of deceiving the public.
Editha R Hechanova, Maria Leah R Lara and Joy Marie R Gabor-Tolentino

Portugal

J Pereira Da Cruz, SA

Trademark protection is acquired through registration and the law provides that the rights in a mark belong to whoever applies to register that mark first (Article 11 of the code).
Maria Cruz Garcia

Romania

Nestor Nestor Diculescu Kingston Petersen

The applicable statutory law and principles are set out in the Civil and Criminal Codes and the Civil and Criminal Procedure Codes.
Ana-Maria Baciu and Delia Belciu

Russia

Part IV of the Russian Civil Code incorporates all IP laws into a single statute, with trademark legislation set out in Chapter 76 of Section VII.
Vladimir Biriulin and Nikolay Bogdanov

Serbia

The fundamental legislation governing trademarks is the Trademark Act, which came into force on December 24 2009 and was amended on January 30 2013. Detailed procedures for filing trademark applications are set out in Decree 43/10, which was issued on July 3 2010.
Dejan P Bogdanovic and Ivan D Jankovic

Spain

Grau & Angulo

Distinctive signs are principally governed by the Trademark Act (17/2001), which replaced the former Trademark Act (32/1988) and was complemented by Royal Decree 687/2002. In 2006 the Trademark Act was further amended by Act 19/2006, which implemented the EU IP Enforcement Directive (2004/48/EC).
Sonia Santos and Jesús Arribas

Switzerland

Meisser & Partners AG

The basic principles for trademark protection in Switzerland are contained in the Federal Act on the Protection of Trademarks and Geographical Indications and the Trademarks Regulation, both of which have been repeatedly revised. The legislation is largely in harmony with the former EU First Trademarks Directive (89/104/EEC)
Marco Bundi and Benedikt Schmidt

Taiwan

Tsai, Lee & Chen

Trademark rights in Taiwan are governed by the Trademark Act and the Enforcement Rules of the Trademark Act. The competent authority for the application and registration of trademarks is the Taiwan Intellectual Property Office (TIPO) under the Ministry of Economic Affairs.
Crystal J Chen, Iris LC Lin and Yiling Liu

Thailand

Dej-Udom & Associates

Trademark registration in Thailand is governed by the Trademark Act BE 2534 (1991) and its subsequent amendment, which came into force on June 30 2000. The act provides the owner of a registered trademark with the exclusive right to use the mark in the course of trade.
Dej-Udom Krairit and Dr Poondej Krairit

United Arab Emirates

Al Tamimi & Company

In the United Arab Emirates, trademarks are regulated by the Federal Trademark Law (37/1992, as amended by 8/2002). The United Arab Emirates is a member of the Cooperation Council for the Arab States of the Gulf (GCC), and as such has approved a law aimed at unifying the trademark provisions across the GCC countries (Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates).
Omar Obeidat, Rasha Al Ardah and Manel Ben Said

United Kingdom

Nabarro LLP

UK trademark law differs in several important respects from the law in other EU member states, despite the implementation by the UK Trademarks Act 1994 (as amended) of the EU Trademarks Directive (89/104/EEC) (now codified in Directive 2008/95/EC) to approximate the laws of EU member states.
David Parrish and Ashley Roughton

United States

Lewis Roca Rothgerber

In the United States, trademarks are governed by federal and state law. The Lanham Act is a federal statute that governs the registration and enforcement of trademarks used in either interstate commerce or foreign commerce that has a substantial effect on US commerce.
Flavia Campbell, Sean Garrison and Michael J McCue

Venezuela

Hoet Pelaez Castillo & Duque

However, in April 2006 Venezuela left the Andean Community. On September 17 2008 the Venezuelan Patent and Trademark Office (SAPI) decided that the relevant trademark and patent legislation would be the Industrial Property Law 1956.
Patricia Hoet-Limbourg

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Issue 69