World Trademark Review Issue 58 December 2015/January 2016

Change of address

By some measure, East Asia appears ahead of the curve when it comes to awareness and adoption of new web domains; but a slow start for certain IDNs may cause some brands to worry about their investments in the space
Jacob Schindler


Inside Track: American Red Cross

The iconic scarlet emblem of the Red Cross has enjoyed protection under the Geneva Conventions for over 150 years. Allison Leader, IP counsel for the American Red Cross, explains how this dovetails with more mainstream instruments and outlines the challenges of protecting IP rights in times of crisis
Tim Lince

Monetising your brand

Valuing intellectual property is an important step for all companies and should be done with an eye on IP strategy. After IP assets are valued, it is often possible to use the information to create additional revenue streams or safeguard against the ramifications of potential legal battles
Weston Anson, Joshua Cawthorn and Paul Shurov

The price of fame and well-known marks

The need to establish confusion in order for a mark to enjoy protection can mean that sometimes fame is more of a curse than a blessing
Lorraine Anne Tay and Oh Pin-Ping

Supreme People’s Court's evolving attitude to letters of consent

New draft regulations – as well as a survey of recent cases – suggest that the Supreme People’s Court is starting to take letters of consent seriously when it comes to conflicts with prior marks
Danny Chen

Selecting and employing expert witnesses in US trademark cases Premium content

Whether to use an expert witness is one of the more important questions that a trademark practitioner can ask his or her client. The answer will depend on a variety of factors, including the issue at hand and where the case will be heard
Louis Pirkey and Jered E Matthysse

Jumping through hoops – qualifying for well-known status in Brazil

While famous marks can benefit from extra protection in Brazil, they must first qualify for well-known status before the Patent and Trademark Office – a murky and sometimes controversial process
Patrícia Lusoli and Rosane Tavares

Pursuing landlords for infringement – wishful thinking or worthwhile remedy?

Two successful prosecutions – one in Brazil and one in Argentina – against landlords of premises where counterfeits were being sold demonstrate that this can be a valuable legal strategy to pursue in Latin America
Gustavo Giay and Andrés O’Farrell

Is Brazil poised to seize China’s counterfeit crown?

As the Chinese economy grows and the country comes under increasing international pressure to boost IP protection, Brazil looks set to overtake it as the world capital of counterfeits. Rights holders need to act now to protect their brands
Jose Henrique Vasi Werner

The future direction of UK IP legislation (and how to lobby for change)

As levels of counterfeiting continue to rise, the former IP adviser to the UK prime minister considers what steps the UK government is taking to tackle the issue, what targets it should focus on in the future and how counsel can ensure that their concerns and those of their company are heard
Mike Weatherley

Geographical indications – why is protection so patchwork?

Despite widely used EU protection for geographical indications, rights holders can also use national laws to protect their goods. However, there are fears that these two systems may lead to uneven protection and even the creation of monopolies
James Tumbridge and Robert Peake

Dealing with counterfeits at trade fairs Premium content

While trade fairs are a valuable way for rights holders to secure international distribution of their goods, they are also common sites for counterfeiting. Brand owners need to act swiftly to take action against infringement as soon as they suspect it
Sascha Abrar

Five years of the Cooperation Fund

Five years after its inception, the Cooperation Fund has helped to transform the IP landscape in the European Union, providing state-of-the-art IT tools and services in national and regional EU IP offices
Ruth McDonald

Implications of 3D printing technology on trademarks – the UAE perspective

3D printing could alter the traditional manufacturing, economic and legal landscape. However, this technology could be seriously disruptive to intellectual property in the United Arab Emirates which, while a financial hub, lacks a strong IP regime
Fatima Qasim

Trademark Intelligence

Organising effective trademark operations

Creating the right structure for a trademark group is key to ensuring it can provide strong brand protection. Companies are beginning to take a collaborative approach to this function, with some considering trademarks from the earliest stages of product planning and development
Ralph Schroeder


Where next for the digital single market?

The European Commission is making a fresh attempt to deliver a single market that functions in the 21st century with the proposed digital single market. It is therefore crucial that brand owners make their needs known to politicians and officials at home and in Brussels
Toe Su Aung and Chris Oldknow

Taking your trademark practice paperless

IP law, and in particular trademark prosecution, is especially well suited to a paperless workflow. A swift survey of the pros and cons suggests that while it might feel like a wrench, there is much to recommend ditching the documents
Michelle Dorman Levin


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

Co-published editorialCountry Correspondents

Fluid trademarks (including slogans)

Canada: Fluid marketing under the new trademark regime

Bereskin & Parr

Consideration should be given to the protection of slogans and fluid marks in view of the changes expected to Canada’s trademark law

China: The need for close collaboration

Kangxin Partners PC

Successful use of fluid marks calls for close collaboration between creative trademark lawyers and marketing teams

India: Retaining freshness with fluid marks and slogans

RNA Intellectual Property Attorneys

Robust protections exist for fluid marks in India, but there are also a number of challenges to consider

Italy: It’s a family thing – protecting a series of trademarks in Italy

Bugnion SpA

There are a number of measures that rights holders should take in order to establish evidence of use for a set of trademarks which constitute a family

Mexico: Flexible, to a degree

Uhthoff, Gomez Vega & Uhthoff

Rights holders must always bear in mind the importance of incorporating core elements of the registered mark within the fluid version

United Kingdom: Dos and don’ts of fluid marketing
United Kingdom

Locke Lord

Fluid trademarks can be an attractive means of engaging with consumers, but there are some basic rules that must be followed

United States: Keeping it fluid in the United States
United States

Davis Wright Tremaine

Fluid trademarks are a good strategy to capture the attention of millennials, but certain steps should be taken


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Issue 74