World Trademark Review Issue 54

April/May 2015

2015 Brand Finance Global 500: China comes of age in the branding world

Strong stock markets in China and Asia contrast with stagnant or falling markets in continental Europe. US and UK markets are consolidating gains and reigniting a boom in IPO and M&A activity, led by iconic branded businesses from China
David Haigh

Features

Inside track: Alibaba

No Chinese company attracted greater international attention last year than Alibaba Group, thanks to its record-smashing listing on the NYSE. World Trademark Review sat down with Karen Law in Hong Kong to discuss the brands, the float and the ongoing fight against fakes
Jacob Schindler

The ins and outs of co-branding

While co-branding can be an excellent way for brands to increase their revenue and break into new markets, several complex business issues need to be addressed before brands get in too deep
Steven Weinberg

Developing trends in design patent enforcement

Design patents can be a powerful tool for protecting a company’s intellectual property – as illustrated by recent trends in enforcement – but a cohesive strategy is essential for such protection to work effectively
Jennifer A Golinveaux and Diana L Hughes

Breaking down the barriers

While take-up of the Madrid Protocol across Latin America appears inevitable, progress has currently stalled. World Trademark Review investigates what WIPO can do to make a breakthrough
Tim Lince

Coming to America: a guide to extending registrations via the Madrid Protocol

It has been over a decade since the Madrid Protocol came into force in the United States, yet many rights holders looking to extend protection still find the US use-based system confusing. Taking care over the initial application can be a wise investment
Lawrence E Apolzon

3D printing and trademarks – the challenges and opportunities ahead

While it is still early days for the technology, the market is growing and a range of brands have already started incorporating 3D printing into their manufacturing, marketing and market delivery processes. Clearly, there is momentum behind the additive manufacturing revolution; and for brand owners, the technology brings both opportunity and risk.

Technology imitates nature – the brave new world of 3D printers

Three-dimensional printing represents a paradigm shift in the traditional manufacturing model. While it offers exciting new opportunities – especially in the field of medicine – it also threatens nearly every aspect of IP protection, including trademarks
Fatima Qasim

An IP office perspective on 3D printing

The UKIPO has published the findings of a study into the IP implications of 3D printing, presenting a number of recommendations for government and industry on how to prepare for the future
Trevor Little

Addressing infringement in the new 3D environment

As 3D printing goes mainstream, so does the risk of protected works being copied. However, an existing IP right – industrial design – could prove key to fighting infringement
Rodrigo Estrada

IP licensing in a 3D printed world

While experts may disagree about the extent to which 3D printing will change the world, there is a growing consensus that this technology will shake up current models of IP protection and licensing
John F Hornick

Looking ahead – the possible effects of 3D printing on the fashion industry

The fashion industry experienced a sudden jolt when 3D printed pieces first appeared on the runway. This article addresses the likely impact of 3D printing technology on the fashion industry and considers what counsel can do now to prepare
Joseph F Murphy

AdWords in Africa – South African case breaks new ground

South Africa’s position as a leader in regional IP jurisprudence was cemented when a court handed down what is believed to be the first case dealing with Google’s AdWords programme on the continent
Gaelyn Scott

Playing the fame card in the Middle East and Africa

Protection for famous marks in the Middle East and Africa depends to an extent on national laws, but a growing body of case law in this area provides much-needed guidance for rights holders
Zeina Salameh

How to run an administrative raid in China

While administrative raids are a popular anti-counterfeiting tool, ensuring that they work smoothly and efficiently is another matter. This could well hinge on the rights holder’s relationship with the local administration for industry and commerce
Danny Chen

Are traders allowed to turn a blind eye to counterfeits?

In a case involving counterfeit contact lenses, a trader was able to rely on the defence under Section 49(i) of the Trademarks Act as there was no reason for him to suspect that the products were counterfeit. The decision may allow traders to more easily avoid criminal liability for dealing in counterfeits
Yew Kuin Cheah and Adam Giam

Columns

Interflora faces fresh call to prove M&S keyword infringement

As the Court of Appeal orders Interflora back to the High Court, there are fresh questions over keyword advertising and what exactly constitutes infringement
Clare Jackman and Lale Kemal

National IP policy talks the talk, but will it ever see the light of day?

A first draft of India’s new national IP rights policy goes a long way towards addressing rights holders’ concerns, with many sensible suggestions. However, it is worryingly vague about the details of implementation

Perspectives

Trademark-related quotes, opinions and observations from around the globe

Co-published editorialCountry Correspondents

Protection of unregistered trademarks and other commercial signs

Canada: The importance of registration
Canada

Bereskin & Parr LLP

While rights in trademarks and other commercial signs can exist irrespective of registration, registration has many important advantages

China: Unregistered rights in a first to file environment
China

Kangxin Partners PC

While there are legal grounds for protecting unregistered trademarks and other commercial signs in opposition and invalidation actions in China, each case will require careful management

India: Reacting to the new interconnected world
India

RNA Intellectual Property Attorneys

Indian courts have gone beyond the text of the statutes to protect the worldwide reputation that any trademark or commercial sign can acquire by virtue of its use, promotion or advertisement

Italy: When the non-registered mark is the packaging
Italy

Bugnion SpA

It is important that companies consider the treatment of packaging as trademarks and designs

Mexico: When use is not enough
Mexico

Uhthoff, Gomez Vega & Uhthoff

While there are ways to protect unregistered distinctive signs in Mexico, rights holders would be well advised to ensure that the signs they use are registrable

Romania: Changing with the times
Romania

VILAU | ASSOCIATES

The 2010 amendment to the Trademark Law extended protection to all unregistered marks so that rights holders can oppose the use and registration of their marks by third parties

United Kingdom: The perils and powers of passing off
United Kingdom

Locke Lord

Passing off can be a useful supplement to registered trademark protection, although the evidential requirements can increase uncertainty and costs

United States: Strong rights without registration
United States

Davis Wright Tremaine

By collecting and producing evidence of use and marketplace awareness, a trademark owner can develop strong trademark rights in the United States without the need for federal registration

Vietnam: Approaches to trade dress
Vietnam

Bross & Partners

While trade dress is not per se registrable, certain aspects are protectable under certain circumstances

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