World Trademark Review Issue 63

Takedown shake-ups: strengthening brand protection on online marketplaces

Frustration over the sale of counterfeits on digital marketplaces has reached a peak in recent months. We asked some of the world’s biggest brand owners what gold-standard protection mechanisms might improve the situation and examined how realistic their suggestions are
Tim Lince

Features

Juggling act: assessing the evolution of EUIPO operations Premium content

The past year has been a busy one in Alicante. In addition to expanding its tools and activities, the EU Intellectual Property Office had to prepare for the changes ushered in by the European trademark reform package. In this year’s annual survey, we asked users to assess its performance during this period of change
Trevor Little

From OHIM to EUIPO: the journey so far

The first raft of changes to the EU trademark system are now in effect, having been implemented in March in exemplary fashion. The EU Intellectual Property Office’s next challenge is to repeat the trick for the remaining changes
The EU Intellectual Property Office

Weighing up your options

Trademark counsel from laws firms across 20 jurisdictions in Europe provide an overview of the performance of their countries’ EU trademark courts

Zombie trademarks – why resurrecting a dead brand can be fraught with uncertainty

There have been a number of instances of defunct brands being reintroduced into the marketplace in recent months. However, current case law on the topic of residual goodwill is inconsistent at best and – whether original owner or resurrector – there is much to consider
Monica Riva Talley and Aisha Haley

Holding companies: a brief primer from Alphabet to Z

Multiple issues are affected by the decision of where to hold a business’s IP assets. As such, analysis of the legal, tax and business considerations is merely the starting point
Michelle Mancino Marsh and Margaret Wheeler-Frothingham

Fee levels: why brand owners need to react fast in the Middle East and North Africa

Recent fee increases are just one area of change creating challenges for brand owners in the Middle East and Africa
Jon Parker

Singapore seeks to turn trademarks into cash

Asia-Pacific is leading the world when it comes to IP collateralisation. Singapore’s groundbreaking IP Financing Scheme recently saw the approval of its first patent-backed loan – and hopefully, lending against trademarks is not far behind
Jack Ellis

Are you overpaying for trademark renewals?

Against a backdrop of inflated official and law firm fees, rights holders need to engage in benchmarking exercises to ensure they are not overpaying for renewals
Volker Spitz

Challenging but not hopeless: anti-counterfeiting in Africa

Counterfeiting is a serious problem in Africa. While laws are in place to tackle illicit trade, practical enforcement is often complicated by local capacity and attitudes
Duncan Maguire

Merchandising rights in China: judicial protection of commercial interests

Ground-breaking decisions have made merchandising rights a useful tool in the battle against bad-faith trademarks
He Jing and Lyu Pei

Is unofficial advertising around sports events playing by the rules?

The international rules on ambush marketing and promotional activities surrounding sports events present a complex maze for counsel to navigate
Mitchell H Stabbe

Columns

Using the courts to tackle excessive delays at the Brazilian PTO

The Brazilian courts have handed down a number of positive decisions for rights holders, mitigating the impact of lengthy delays at the Brazilian Patent and Trademark Office
Ana Paula Affonso Brito

Not just a voice: endorsements and accountability in India

To date, no liability has been attributed to brand ambassadors where the brands they endorse have failed to live up to expectations. However, that could be set to change
Nishad Nadkarni and Vivek Ayyagari

Where next for EU trademarks?

The impact of Brexit on trademarks is still unclear. Might brand owners be better served by a European system which maintains the principal features of the current system, but applies them to smaller groupings of territories?
Julius Stobbs and Lucy Cundliffe

Perspectives

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

Co-published editorialCountry Correspondents

Advertising (unfair and comparative)

Canada: Canada sees increase in class action lawsuits for misleading claims
Canada

Bereskin & Parr LLP

Several recent cases suggest that the most likely group to take action against misleading advertising may no longer be regulators or competitors, but disgruntled consumers acting as a class

China: Advertising, promotion and your brand: sometimes the best of intentions just won’t do
China

Kangxin Partners PC

While cease and desist letters work well for small, localised issues, where false advertising is rampant across China, other protective measures must be taken

European Union: Staying within the boundaries
European Union

Locke Lord

A robust legislative framework governs this controversial yet popular form of marketing in Europe, and a wealth of case law can be drawn on to determine whether comparative advertising is lawful

India: Striking the right balance
India

RNA Intellectual Property Attorneys

Comparative advertising is allowed as long as the advertiser seeks to portray the advantages of its product in a truthful and honest manner. However, the courts have mixed views of puffery

Italy: The interplay between comparative advertising and unfair competition law
Italy

Bugnion SpA

While comparative advertising has a direct impact on competitors, misleading commercial communications may indirectly affect third parties’ products and image, resulting in a tort of unfair competition

Mexico: Staying the right side of fair
Mexico

Uhthoff, Gomez Vega & Uhthoff

Most comparative and unfair advertising campaigns are designed to denigrate the quality or reputation of a competitor’s goods or services. Fortunately, remedies are available

Romania: When advertising campaigns border on the unacceptable
Romania

Vilau I Associates

Recent decisions, relating mainly to audiovisual advertising, reflect the regulators’ willingness to tackle misleading and comparative advertising

Turkey: A new era for advertising
Turkey

Kenaroglu Law Firm

The first Turkish regulation allowing comparative advertising is due to come into force by the end of 2016. But what will it mean for rights holders?

United Kingdom: Comparative advertising and enforcement in the United Kingdom
United Kingdom

Marks & Clerk

IP law balances protecting individuals and companies from unfair use of their endeavours with promoting healthy competition – and comparative advertising clearly demonstrates this balance

United States: How to use a third-party mark without infringing it
United States

Lewis Roca Rothgerber Christie

Provided that you take care, it is quite possible to stay on the side of nominative fair use of a third-party mark, without straying into likelihood of confusion territory

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Issue 68