World Trademark Review Yearbook 2017/2018

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

Introduction

Supporting innovation and growth for the global trademark community

International Trademark Association

In 2017, INTA remains focused on several key issues – chief among them anti-counterfeiting, internet governance, plain and highly standardised packaging restrictions and working to build and maintain strong and harmonised IP laws and regulations on a global scale.
Ronald van Tuijl

The future of a European brand owners’ association in a global IP community

MARQUES

In 2016 MARQUES, the European Association of Trademark Owners, celebrated the 30th anniversary of its first official conference. In this chapter, Gregor Versondert provides some highlights from this special conference and explains how MARQUES has achieved its objectives within the European and international IP framework.
Gregor Versondert

Special focus

Managing major projects in a trademark portfolio: creation, assignments and renewals

BEST Rechtsanwälte PartmbB

As responsibility for a company’s trademark portfolio is frequently placed in the hands of a small number of specialists who work to their limits on day-to-day issues, major projects such as creation, assignment and renewal often generate additional work that exceeds in-house capabilities.
Udo Pfleghar and Michael Best

Balancing efficiency, expertise and protection: the trademark ecosystem

Pryor Cashman

The number of trademark applications is rising each year as a result of the ease of reaching consumers through the Internet and the globalisation of markets. While some regions (eg, China) are registering more marks than others, this increase is a worldwide trend.
Dyan Finguerra-DuCharme

Anti-social media: new horizons in brand-based fraud

Reed Smith LLP

Trademark infringement is cycling through social media at alarming rates, with infringers using these platforms to legitimise sophisticated schemes. Whether the objective relates to cybersecurity, counterfeiting, passing off, unfair competition or something else, many schemes have one component in common: the use of trademarks to secure consumer confidence.
Clark W Lackert and Jonathan Goodwill

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. Apart from direct action against sellers, importers and manufacturers, the most important legal remedies at hand are border measures.
Thomas Mølsgaard

Country chapters

Trademark procedures and strategies: Austria

BINDER GRÖSSWANG Rechtsanwälte GmbH

In Austria, the national legal framework for trademarks is set out in the Trademark Protection Act (260/1970, Federal Law Gazette). Its provisions implement the EU Trademark Directive (89/104/EEC), which aimed to partially harmonise the national trademark laws of EU member states. The EU Customs Code and the Austrian Law against Product Piracy also apply.
Ivo Rungg and Hellmut Buchroithner

Trademark procedures and strategies: Brazil

Bhering Advogados

In Brazil, trademarks are governed by the Law on Industrial Property (9,279/1996). Brazil is a party to the following international treaties: the Paris Convention for the Protection of Industrial Property; the Agreement on Trade-Related Aspects of Intellectual Property Rights; and the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.
Philippe Bhering

Trademark procedures and strategies: Canada

Bereskin & Parr LLP

Major amendments to the Trademarks Act were passed in 2014, partially to facilitate implementation of the Nice Agreement, the Singapore Treaty and the Madrid Protocol. Most notable among these amendments is the elimination of use as a registration requirement. The amendments received royal assent, but have not yet been implemented. The latest projections suggest that implementation could take place in 2019.
Cynthia Rowden, Susan Keri and Tamara Céline Winegust

Trademark procedures and strategies: Chile

Estudio Villaseca

Major amendments to the Trademarks Act were passed in 2014, partially to facilitate implementation of the Nice Agreement, the Singapore Treaty and the Madrid Protocol. Most notable among these amendments is the elimination of use as a registration requirement. The amendments received royal assent, but have not yet been implemented. The latest projections suggest that implementation could take place in 2019.
Sergio Amenábar V

Trademark procedures and strategies: China

Chofn Intellectual Property

According to Article 4 of the Trademark Law, any natural person, legal person or other organisation can apply for and own a trademark. However, in practice, a Chinese natural person is not qualified to apply for or own a registered mark, unless he or she owns his or her own business. There is no such restriction for foreign natural persons.
Xiaoming Liu and Wen Peng

Trademark procedures and strategies: Cyprus

Michael Kyprianou & Co LLC

Trademarks in Cyprus are governed by: the Paris Convention for the Protection of Industrial Property; the World Intellectual Property Organisation Convention; the Madrid Protocol; the Agreement on Trade-Related Aspects of Intellectual Property Rights; EU directives and regulations; the Trademarks Law (Cap 268); and case law.
Ermioni Pavlidou

Trademark procedures and strategies: El Salvador

Romero Pineda & Asociados

rademarks 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. An additional advantage is the inclusion of clear and simple rules for calculating damages. The law has its own statute of limitations rules, which prevail over the Code of Commerce’s general provisions.
José Roberto Romero

Trademark procedures and strategies: 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 IP Code. The code was amended several times, in particular by Law 2007-1544, which implements the EU IP Rights Enforcement Directive (2004/48/EC).
Alain Berthet and Bénédicte Devevey

Trademark procedures and strategies: Germany

COHAUSZ & FLORACK

The following are enforceable in Germany: German trademarks, EU trademarks, German trademarks based on international registrations, names and non-registered trade designations. German trademarks are governed by the Trademark Act, which implements the EU Trademark Directive (89/104/EEC) and the Regulation on Trademark-Related Administrative Proceedings.
Erik Schäfer, Ulrike Alice Ulrich and Reinhard Fischer

Trademark procedures and strategies: Greece

Dr Helen G Papaconstantinou and Partners

Any individual or legal entity may file for the registration of trademarks, while clubs and associations may apply for the registration of collective trademarks. In case of more than one applicant, a common representative must be appointed.
Fotini Kardiopoulis, Miranda Theodoridou and Dimitra Nassimpian

Trademark procedures and strategies: India

Anand and Anand

The Trademarks Act and related rules prescribe the procedure to be followed before the Trademarks Registry. In the case of civil proceedings initiated before the courts, the Code of Civil Procedure 1908 applies, while in the case of customs recordal, the Intellectual Property Rights (Imported Goods) Enforcement Rules 2007 apply.
Safir Anand, Madhu Rewari and Revanta Mathur

Trademark procedures and strategies: Israel

Pearl Cohen Zedek Latzer Baratz

The courts have recently addressed the registration of 3D trademarks and slogans as trademarks – ruling that in certain cases, the shape of a product may be protected as a 3D trademark if it has acquired distinctiveness and is used as a trademark, and that a slogan which is filed for registration should be examined in the same manner as any other mark and should not be a priori considered inherently non-distinctive.
Nachman Cohen-Zedek, Dor Cohen-Zedek and Anat Mandel

Trademark procedures and strategies: Italy

Bugnion SpA

The protection of industrial property rights in Italy is regulated by the Civil Code and the Industrial Property Code. The Industrial Property Code was brought into force in 2005 by Decree-Law 30/2005; it was subsequently reformed by Legislative Decree 131/2010. Further, the implementing regulations of the code were introduced by Ministerial Decree 33/2010.
Simone Verducci-Galletti and Luca Colombo

Trademark procedures and strategies: Japan

Nishimura & Asahi

The Trademark Law and its related regulations govern the registration and protection of trademarks in Japan. The Examination Guidelines for Trademarks also play an important role in the examination of trademark applications at the Japan Patent Office (JPO). Revisions to the examination guidelines are underway and additional revisions (eg, guidelines on judging the similarities between trademarks) are currently under discussion.
Hitomi Iwase, Tamao Shinbo and Chisako Yagi

Trademark procedures and strategies: Kenya

Anjarwalla & Khanna

Any person claiming to be the proprietor of a trademark that it uses or proposes to use may apply to register the mark. Where an applicant appoints an agent to act on its behalf, the applicant must provide the agent with a power of attorney signed in the agent’s favour. This power of attorney need not be legalised.
Anne Kiunuhe and Shem Otanga

Trademark procedures and strategies: Mexico

Uhthoff, Gomez Vega & Uhthoff SC

The Industrial Property Law is the statute governing trademarks and other industrial property rights. The law comprises seven sections, the fourth of which is titled “Trademarks, Commercial Slogans and Trade Names”.
Eryck Armando Castillo and Jimena Chi Barrales

Trademark procedures and strategies: 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). Apart from cases of unfair competition and bad faith, the code sets down four situations in which the owner of an earlier unregistered right can oppose the grant of a previously applied-for registration.
Maria Cruz Garcia

Trademark procedures and strategies: Romania

Nestor Nestor Diculescu Kingston Petersen

There is no requirement to use a mark in order to acquire trademark rights. The Romanian trademark system is based on the first-to-file principle and registration is possible without preliminary use. If a trademark is refused registration for lack of distinctive character, this can be overcome by showing that the mark has acquired distinctive character through use prior to its application date.
Ana-Maria Baciu and Andreea Bende

Trademark procedures and strategies: Russia

Ivanov, Makarov & Partners

Legal protection of trademarks in Russia is governed by the relevant provisions of Part 4 of the Civil Code 2008 (the latest amendments to which were enacted on July 4 2016). The Civil Code also provides the basics for registration procedures, which are developed in detail in the administrative regulations of the Russian Trademark Office (Rospatent).
Mark Chizhenok and Olga Tikhonina

Trademark procedures and strategies: Serbia

Popovic, Popovic & Partners

The following national laws govern trademarks in Serbia: the Law on Trademarks (Official Gazette RS 104/2009, 16/12/2009 and 10/2013); the Customs Law (Official Gazette RS 18/2010, Part VIII – “Measures for the protection of intellectual property rights at the border”); the Law on Special Authorities for the Efficient Protection of IP rights (Official Gazette RS 46/06 and 104/09); and The Law on Trade (Official Gazette RS 53/2010 and 10/2013).
Lidija B Djeric and Gordana M Popovic

Trademark procedures and strategies: 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

Trademark procedures and strategies: Switzerland

Meisser & Partners AG

The basic principles for trademark protection in Switzerland are contained in the Federal Act on the Protection of Trademarks and Indications of Source and the Trademark Protection Ordinance, both of which have been repeatedly revised. The legislation is largely in harmony with the former EU First Trademarks Directive (89/104/EEC); however, as Switzerland is not an EU member state, the EU trademark regime does not apply.
Marco Bundi and Benedikt Schmidt

Trademark procedures and strategies: Ukraine

Gorodissky & Partners

National trademark laws include: the Civil Code of Ukraine (435-IV/2003); the Law on Protection of Rights to Marks for Goods and Services (3689-XII/1993) (the ‘Trademark Act’) and; the Rules for Drafting, Filing and Consideration of Trademark Applications, approved by the State Department for Intellectual Property (116/1995).
Nina Moshynska

Trademark procedures and strategies: United Kingdom

Finnegan Europe LLP

There are no special requirements for trademark ownership in the United Kingdom and any legal or natural persons capable of owning property in their own name can apply for and own a trademark.
Clare Cornell

Trademark procedures and strategies: United States

Fitzpatrick, Cella, Harper & Scinto

US trademark law is governed by a federal statute known as the Lanham Act, as well as state law. The Lanham Act governs enforcement of trademarks, service marks and unfair competition, and provides authority to the US Patent and Trademark Office (USPTO) to register marks used in interstate or foreign commerce. In addition to the Lanham Act, each state has its own trademark laws that provide for protection and enforcement of marks used within that state.
Jessica Hiney and Lisa M Mottes

Trademark procedures and strategies: Venezuela

Hoet Pelaez Castillo & Duque

In Venezuela, exclusive trademark rights are granted only by registration according to the Industrial Property Law. However, the owners of unregistered trademarks may be able to prevent the registration of marks by filing an opposition to the application based on their unregistered trademarks.
Joaquín Núñez-Landáes

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Issue 70