World Trademark Review Issue 60

April/May 2016

The world’s most valuable brands in 2016

While some sceptics still question the point of brand valuations – given that different valuers arrive at significantly different amounts – understanding the methodologies used demonstrates that brand value is a crucial indicator of overall corporate value, now more than ever
David Haigh

Features

Trademark patterns of the top R&D-driven innovators Premium content

The trademark patterns of R&D-driven innovators confirm the role of trademarks as a key intangible asset in the corporate strategies of innovative firms
Mafini Dosso

Europe’s brave new trademark regime and how it will affect rights holders

The EU trademark law reform process was finally concluded at the end of 2015, with many of the changes that will affect Community trademarks due to come into force on March 23 2016. But what will the new regime mean for rights holders?
Verena von Bomhard

A year of experimentation in China’s new IP courts

Specialised IP courts in Beijing, Shanghai and Guangzhou have been in session for over a year. They have already embarked on some of the boldest experiments in China’s recent judicial history
Jacob Schindler

Follow the money – chasing international counterfeiters through the US legal system

US trademark law contains robust remedies for brand owners looking to bring offshore infringers to justice. Although the process requires diligence, it is possible to use it to identify counterfeiters and even freeze and ultimately recover funds held in foreign accounts
Anne Coyle, Howard S Hogan and Robert Weigel

Federal Circuit finds disparaging marks registrable – analysis and reaction

In its reversal of a refusal to register THE SLANTS, the Federal Circuit has found unconstitutional the prohibition on disparaging marks. World Trademark Review compares reactions from corporate counsel, private practitioners and the applicant himself
Trevor little

Preliminary injunctions – the end of the matter or just the beginning?

While preliminary injunctions are meant to act as an emergency measure to preserve the status quo until a full trial, there are good reasons why many signal not only the start, but also the end of a trademark case
Jane Shay Wald

Psychology and decisions in IP trials

Most legal disputes involving intellectual property hinge on some degree of subjective human evaluation. Consequently, understanding the underlying principles of psychology and their application can be a powerful advantage
James Wright

To sub-license or not to sub-license – a not-so simple question

While sub-licensing can generate additional revenue, increase name recognition and streamline manufacturing processes, a licensor should use the licence agreement to help carefully structure the rights and obligations of the parties to any future sub-licence agreements
Michael N Spink and Briana Emerson

Misunderstandings, mistakes, mistrust: trademark (mis)reporting in the media

Skewed coverage of trademarks in the mainstream media is translating into public confusion at best and heightened hostility towards intellectual property at worst. We investigate the extent of the problem and consider what stakeholders can do to redress the balance
Tim Lince

Border protection in Latin America – the future looks brighter

Despite the region’s reputation as a haven for counterfeiters, several Latin American countries are making significant strides in developing and using highly effective anti-counterfeiting tools
Santiago R O’Conor

The evolution of IP practice from an in-house perspective

In-house legal teams of all sizes seek external providers which offer value, flexibility, competence and reliability. Service providers must offer individual, customised programmes not only to be responsive, but also to provide an unsurpassed level of personalised service
Deborah Greaves

Establishing bona fide use in the Middle East and Africa

The bona fide use requirement in the Middle East and Africa differs significantly from that in the United States. We examine the different evidence that may be considered when challenging an applicant’s use in administrative or court proceedings
Zeina Salameh

Columns

Justifying the law on unjustified threats

The Law Commission has published a bill that would reform the law on unjustified threats with regard to IP rights. In particular, it would extend current legal exceptions which have been carved out for patents to trademarks and designs
Aminder Khatkar

Commercial courts could signal bright new dawn for trademark disputes

The government in India has finally given the green light to special courts for adjudicating commercial disputes, including IP disputes. While the new courts will charge higher fees, they should make it possible for cases to be heard much more swiftly
Rachna Bakhru and Ranjan Narula

Co-published editorialCountry Correspondents

The top trademark challenges

Canada: The challenging world of Canadian official marks
Canada

Bereskin & Parr

Rights holders could find that using simple greeting terms may offend the rights of official mark holders

China: The myth of evidence in Chinese trademark cases
China

Kangxin Partners PC

The issue of sufficiency of evidence in trademark cases in China poses a number of issues for brand owners

European Union: Preparing for changes in EU trademark law
European Union

Locke Lord

A challenge for trademark counsel in Europe is preparing for the upcoming trademark reform package

India: A billion people and the challenges in reaching them
India

RNA Intellectual Property Attorneys

With a population of over 1 billion, India offers a billion opportunities to brand owners looking to invest. However, there are a number of unique hurdles to overcome

Italy: Clearing the field of weak marks
Italy

Bugnion SpA

With trademark registrations valid for 10 years and many existing marks on the register, it can be challenging to find and register an original trademark

Turkey: Combating trademark squatting
Turkey

Kenaroglu Intellectual Property

In Turkey, the bad-faith registration of well-known trademarks by third parties is a common problem

United Kingdom: Navigating the social media environment
United Kingdom

Marks & Clerk

The increase in different media channels continues to present difficulties in clearing marks for use and steering a business on brand selection

United States: Busy enough for you?
United States

Lewis Roca Rothgerber Christie

In the United States, practitioners must navigate a range of challenges, starting with uncertainty over standards for obtaining injunctions

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Issue 70