WTR 64 - World Trademark Review

World Trademark Review Issue 64 December 2016/January 2017

Preparing for the unexpected

Trademark counsel have a key role to play when it comes to planning for the worst – whether by seeking to offset the risk of litigation costs through IP insurance, to safeguard critical operations when the unexpected occurs or to protect brand reputation during crisis response scenarios


Is China still the Wild West?

To many western rights holders, China remains a mysterious market; but there is more going on than licensing associations and the media would suggest
Yizan He

Changing the game: the emerging business models shaping the trademark industry Premium content

In an age of tightened client purse strings and rapidly developing technology, the IP legal landscape is on the brink of an innovation revolution. While traditional business and pricing structures still prevail, many new models are shaking up the market – and some of them could represent the future of the industry
Tim Lince

Going public Down Under

Australia has been at the forefront when it comes to alternative business models in the legal services market. As IP practices get in on the act, big changes could be on the cards for counsel and clients
Jack Ellis

Factors driving forum shopping in trademark disputes: an EU perspective

Various factors influence the choice of an effective enforcement strategy. However, deciding on the wrong venue can result in delays and unnecessary costs
Leighton Cassidy and Sheena Sheikh Brown

Assessing the value of distressed brands

In assessing the value of brand-related assets, a number of fundamental steps must be taken. The picture becomes more complex depending on whether distressed or non-distressed assets are being assessed
Gabe Fried and David Peress

Reducing your premium

When seeking IP insurance cover, rights holders can take a number of steps to reduce the cost of their premiums
David Bloom

Preparing for the worst: a corporate perspective on trademark litigation insurance

While attorneys recognise the need to prepare for the worst potential outcomes when counselling clients and negotiating transactions, they sometimes fail to prepare for insurance management should the worst-case scenario come to pass
Jessica Elliott Cardon

Navigating the insurance maze

When will trademark infringement suits with typical accompanying claims trigger insurance coverage – and when do exclusions apply?
David A Gauntlett

A two-pronged approach to cybersecurity and incident response planning

Today the issue is not whether a law firm will suffer a cyber intrusion, but when. Therefore, the critical question for every law firm is how well it will respond when the inevitable happens
Steven M Puiszis and Anthony E Davis

Revving up your reputation

In the new social media landscape, corporations are more susceptible than ever to external attacks. What can brand managers do to avoid long-term reputational damage and restore value quickly in the event of a crisis?
Josh Culling

Access denied: an international perspective on ISP blocking injunctions

While the UK Court of Appeal has opened the door for broadband ISP blocking to combat trademark or copyright-infringing activities, the picture in the United States, China and Hong Kong is more complex
Nathaniel Boyer, Josefine Crona, Zhen (Katie) Feng, PJ Kaur, Eugene Low, Alastair Shaw and Jessica Vosgerchian

The trademark manual: a critical tool if deployed effectively

Even if you have a strong trademark programme in place, a regular rights audit is a fundamental requirement. However, it needs to be approached – and used – in the right way
Kathleen A Rheintgen

The dominant feature test: not so Lucky after all

Recent decisions involving the application of established trademark principles in infringement and opposition proceedings in South Africa are proving a cause of some concern
Hugo Prinsloo

Trademark and passing-off litigation in sub-Saharan Africa

The rise in numbers of trademark cases is good news for brand owners operating in sub-Saharan Africa and should help to develop a robust body of case law for this area
Nick Redfearn and Carole Theuri

Looking ahead: the EU certification mark and what it means for rights holders Premium content

October 2017 will see the introduction of EU certification marks. The launch of this new right will require careful planning and will have a significant impact on existing trademark practice
Richard Dissmann and Sarah Somboonvong


Smell-alikes: Lessons from Chanel and Coty’s smell-alike victory

A Netherlands court has held that use of perfume comparison lists constitutes trademark infringement when it crosses the boundaries of comparative advertising
Ranee van der Straaten and Denise Verdoold

Searches: The cost of free: why thorough trademark searches are necessary

When it comes to trademark clearance, thorough searches are essential – but can free search tools give lawyers the functionality they need?
Alexandra J Roberts


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

Co-published editorialCountry Correspondents

Well-known and famous marks

Canada: Judicial treatment of iconic marks

Bereskin & Parr LLP

Although famous marks are not specifically protected by statutory provisions in Canada, protection is available, provided that owners can prove the mark’s fame

China: The problem with defining ‘famous’

Kangxin Partners PC

Well-known marks and famous marks are two distinct concepts in China – while a broader scope of protection is available for the former, famous certification is available only to marks registered by Chinese companies and citizens

European Union: Protecting well-known marks under international treaties
European Union

Locke Lord LLP

The lack of a common definition of ‘well-known mark’ under international treaties has led to variations in interpretation and thus protection. However, EU legislation and case law continue to evolve in this area

India: Courts step up when it comes to famous marks

RNA Intellectual Property Attorneys

Recent case law from Indian courts confirms their pragmatic approach and bodes well for the protection of well-known marks in India, even when trademarks are not registered in the country

Italy: European Union and Italy in alignment over protection of well-known marks

Bugnion SpA

When it comes to the protection of well-known marks, Italy – which is home to some of the most famous design and fashion brands in the world – is in line with the European Union

Mexico: Recognising the difference: three ways to obtain well-known or famous status

Uhthoff, Gomez Vega & Uhthoff

Well-known and famous trademarks can take advantage of additional protection in Mexico – although evidence of this status must be provided for marks to benefit

Turkey: Exploring the options available to owners of popular marks

Kenaroglu Intellectual Property

The Turkish trademark regime not only provides wider protection for well-known marks, but has also established a special registry for such marks for advance acceptance of their reputation in any conflict

United Kingdom: Protecting and enforcing renowned trademarks in non-registration jurisdictions
United Kingdom

Marks & Clerk

Many companies now operate in a global marketplace and enjoy a strong international reputation for their famous brands. However, problems can arise where brands are not registered as trademarks in every country where they have a strong reputation

United States: Trademark dilution and clearance
United States

Lewis Roca Rothgerber Christie

While trademark dilution claims can be successfully asserted only by owners of famous marks, it is not always obvious which marks will qualify as famous


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Issue 74