WTR 62 - World Trademark Review

World Trademark Review Issue 62 August/September 2016

The pressure of rising demand

Trademark applications at the USPTO increased by 10.7% in fiscal year 2015. As the office grapples with this expanding workload, we conducted a survey to gauge user sentiment on its operations and explore some of the trends and issues that are defining the US filing landscape
Trevor Little


Shedding light on trademark litigation success

On April 21 2016 World Trademark Review hosted its inaugural Trademark Litigation: Practical Strategies conference in New York. The event revealed secrets to maximise the chances of success in litigation and proved an eye-opening experience for attendees
Tim Lince

Inside track: A different story

When New Zealand decided it was time to showcase its entrepreneurial credentials on the world stage, it needed an equally proactive approach towards protecting its intellectual property. That is where the New Zealand Story begins
Jack Ellis

WTR Industry Awards 2016

On May 24 2016 World Trademark Review announced the winners of its tenth Industry Awards at an exclusive ceremony at the Hilton Orlando Bonnet Creek. The awards are designed to recognise the vital work carried out by in-house trademark counsel and identify the teams and individuals that are performing their functions to the highest possible standards. Over the following pages we speak to the winners and explain why they were judged to be leading examples of industry best practice

Working out a national enforcement budget

Securing and allocating an IP enforcement budget can prove a significant challenge, especially for multinationals. However, a five-step approach could result in budgets which are coherent and defendable
Zeeger Vink and Paola Piccoli

Sale and leaseback – a model for increasing trust in IP assets?

Placing a tangible financial value on a brand and then leveraging that value remains a frustratingly opaque process. However, the creation of secondary markets to sell IP assets has encouraged lenders to look more closely at this asset class
Stephen Robertson

Maximising success in UDRP complaints Premium content

In their bid to ensure that UDRP actions succeed, there are a range of critical issues that trademark holders should consider
Douglas A Rettew and Jonathan Uffelman

Manufacturing infringement: the OEM conundrum

Recent developments have yet to provide clarification on the judicial treatment of trademark infringement and use in the original equipment manufacturing business model
Davide Follador

Is apportionment of profits a fair system for rights holders?

Recent case law has highlighted a flaw in the method for calculating damages for trademark infringement, which could leave brand owners operating in good faith dangerously vulnerable to bad-faith trademark owners
Julie Luo and George Chan

Administrative enforcement: an important remedy for design disputes

Administrative enforcement is a useful tool for resolving design disputes, but it remains underused by international design owners
Eric Su

Hyperlinking – the EU perspective on a challenging issue

The advocate general has published an opinion on hyperlinking which highlights not only how crucial the practice is to the functioning of the Internet, but also how challenging it can be to balance the interests of users and rights holders
Marina Perraki

Plain packaging – is the United Arab Emirates ready?

Plain packaging for tobacco products is being introduced around the world. However, despite popular pressure for such a regime to be adopted in the United Arab Emirates, there are fears that it could do more harm than good
Fatima Qasim


Brand protection agencies – are they part of the problem?

Counterfeiting shows no sign of abating in India and multinationals often resort to local brand protection agencies to act on their behalf. However, a significant number of such agencies are actually benefiting from the illicit trade at the same time as purporting to fight it
Rishi Kulshresth

Fighting counterfeiting – counter terrorism?

Counterfeiting is too often perceived as a victimless crime. However, as global counterfeiting is shown to directly fund terrorist groups, the rationale for combating counterfeiting must evolve accordingly
Monique M Couture

Leveraging modern technology

While many IP offices have made substantial progress in leveraging the latest technological breakthroughs, they could still do more to modernise their workflows
Nehal Madhani

Co-published editorialCountry Correspondents

Pharmaceutical trademarks

Canada: Will new trademark regime raise the bar?

Bereskin & Parr LLP

The new Trademarks Act’s registration requirements and provisions on distinctive marks look set to have a significant impact on how pharmaceutical companies manage their trademark strategies

China: Trademark registration: a secret weapon

Kangxin Partners PC

Unlike patents, registered trademarks benefit from 10 years of protection and unlimited renewals, making them a valuable tool when it comes to safeguarding pharmaceutical products

European Union: Investment and safety within the European Union
European Union

Locke Lord

Although costly, R&D in the healthcare sector is rewarded with patents. But it is also wise to invest time and money in developing a strong, recognisable brand in the pharmaceutical industry

India: A strict approach for a growing industry

RNA Intellectual Property Attorneys

Indian courts are adopting a stricter approach to pharmaceutical trademarks – not only to highlight that confusion between medicinal products can be fatal, but also to encourage brand owners to invest in India’s growing pharmaceutical industry

Italy: Is change afoot in Italy?

Bugnion SpA

Recent opposition case law appears to indicate a change in the approach to the relevant public in relation to pharmaceutical products – but the reasons behind this new trend are not yet clear

Mexico: No specific legislation, but stricter prosecution criteria are applied

Uhthoff, Gómez Vega & Uhthoff SC

As confusion over pharmaceutical marks could affect public health as well as patient safety, a stricter examination process is applied to these marks

Turkey: Pharmaceutical trademarks: regulation, parallel imports and advertising

Kenaroglu Intellectual Property

Before use on the market, a pharmaceutical trademark must undergo examination by two different authorities – a system designed to protect both public safety and existing IP rights

United Kingdom: English High Court considers parallel imports
United Kingdom

Marks & Clerk Solicitors

The High Court has held that pharmaceutical product Epanutin must be rebranded in order to gain access to the market. The decision provides a useful review of UK law on the parallel import of pharmaceutical products

United States: A prescription for clarity
United States

Lewis Roca Rothgerber Christie

Rights holders must find a way to resolve the apparent conflict between the strict likelihood of confusion test applied to pharmaceutical marks and findings that consumers are likely to exercise greater care when looking at health-related goods


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