World Trademark Review Issue 67

June/July 2017

Going all in

As law firms adapt to more sophisticated client demands and restructure their pricing options, many corporate trademark departments are being radically reorganised in a bid to control costs and bring more work home – but will the gamble pay off?
Tim Lince

Features

WTR Industry Awards 2017: the shortlist revealed

The WTR Industry Awards 2017 – which will be presented at an exclusive ceremony at the Museum of Contemporary Art in Barcelona – honour leading trademark teams and individuals across a range of sectors. We reveal the shortlist

The consequences of Brexit for trademark protection Premium content

In March, the UK government triggered Article 50 of the Lisbon Treaty, officially commencing negotiations for the United Kingdom to leave the European Union. Trademark owners now face a number of scenarios
Christopher Benson

Fusing corporate brands: the IP implications of growth through M&A

Where companies merge with or acquire other businesses, the challenge for IP professionals is not always as simple as ensuring the smooth transfer of the associated rights – there is also the question of combined or conflicting brands
Tom Farrand

How are courts analysing issue preclusion post-B&B Hardware?

Two years on from the Supreme Court ruling in B&B Hardware Inc v Hargis Industries, a clearer picture is emerging of how courts will handle the issue of preclusion. However, a number of questions remain unanswered
Bobby Ghajar and Marcus Peterson

The right tool for the job: selecting forums for trademark disputes

All too often, trademark lawyers advocate for the forum which is most familiar and comfortable. Instead of letting habit influence the choice of the forum, the nature of the controversy and the brand owner’s business objectives should guide the process
Jedediah Wakefield and Andrew P Bridges

Notorious markets to monitor Premium content

In the first of a two-part series, we profile markets which were omitted from the Office of the US Trade Representative’s Notorious Markets List, but which brand owners should have on their radars. This issue we turn our attention to Central and South America
Carlos Dávila-Peniche and Yuliana Salamanca

A new chapter for protection of well-known marks in Indonesia

Indonesia’s Trademark and Geographical Indications Law 2016 ushers in long-awaited improvements for rights holders. However, remaining vulnerabilities could perpetuate bad-faith registrations and trademark squatting
Aga Nugraha

URS: fit for purpose or time to upgrade?

In the nearly four years since its debut, the Uniform Rapid Suspension System has not experienced high take-up or indeed praise. As ICANN reviews current rights protection mechanisms, the time for analysing and suggesting improvements to the URS is now
Brian J Winterfeldt and Emily Murray

The verdict on China’s specialist IP courts

Two years after the Beijing IP Court became China’s first specialised IP dispute forum, evidence from its first year of operations suggests that the country is right to push ahead with specialisation
Jack Ellis

Can China seize the moment in online anti-counterfeiting?

China is currently drafting a new e-commerce law – a major opportunity for it to take the lead in the fight against counterfeiting by rebalancing the responsibilities of all the actors involved in this far-reaching crime
David Saussinan

Tales of a market (milk)shake-up

What happens when consumers and the law have different understandings of what makes a brand? Bob’s Ovomaltine milkshake provides a useful case study on the interplay between branding and customer perception
Renata Cavalcante Carneiro Da Cunha

Building a dynamic landscape

With speedier resolution of lawsuits expected to clear backlogs in litigation and the government seeking to simplify registration procedures, the trademark environment in India is undergoing significant changes
Bisman Kaur and Raghav Paul

From genuine use to procedural questions: a year on the European trademark scene

A number of significant decisions were handed down in Europe last year, with the courts grappling questions surrounding absolute and relative grounds for refusal, proper procedure and infringing and genuine use
Axel Nordemann

Trademarks with dictionary meanings risk becoming meaningless in Africa

A string of recent decisions finding that a mark’s ordinary meaning negatively affects its ability to serve as a unique indicator of source could have a significant impact on brand owners
Christine Strutt

New decision highlights legal risks surrounding AdWords in Brazil

A recent decision on Google AdWords represents a paradigm shift in court thinking and sounds alarm bells for both advertisers and search engines doing business in Brazil
Laetitia d’Hanens and Vanessa Ribeiro

Lanham Act boundaries brought to fore in 2016

Notable decisions in 2016 expanded the Lanham Act’s borders of extraterritorial application, while the constitutional debate over Section 2(a) is poised for resolution in 2017
Molly Buck Richard and David J Diamond

Grappling with the nuances of trademark law

Decisions focused on administrative proceedings, oppositions, infringement and the use of official marks kept Canadian courts busy in 2016, with a number of critical learnings for counsel
Laurent Carrière

Columns

Opinion: Fear, vice and loathing in the law

The trademark world is increasingly affected by the wider political environment, with one current fear being the acceptance of false evidence as reality and the way that legislators can shape the commercial world in which brands operate
Relani Belous

Battle of Argos: Domain name infringement

There a number of important takeaways from the latest domain name conflict in the United Kingdom, including the importance of registering trademarks as domain names at the earliest opportunity
Leighton Cassidy, Heidi Hurdle and Alice Edwards

In-house: Think like a start-up to add value: how Microsoft manages its legal function

As more brands expand and globalise, the management of trademark portfolios is becoming increasingly challenging. With a large and complex portfolio to handle, Microsoft is addressing this issue head on
Jayne Durden

Perspectives

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

Co-published editorialCountry Correspondents

Design and trade dress

Canada: Addressing the challenge of the new Trademarks Act
Canada

Bereskin & Parr LLP

Amendments to the Trademarks Act should come into force in 2019. While an expanded definition of ‘trademark’ should prove a boon, more restrictive examination practice could cause difficulties

China: Strengthening trade dress protection in China
China

Kangxin Partners

In China, trade dress can be protected under patent, copyright, trademark and unfair competition laws. Each of these has pros and cons which should be considered when seeking protection

Germany: Unfair competition remains tough to call for design cases
Germany

Meissner Bolte

Recent case law reveals uncertainty around the scope of protection for the overall appearance of a product or its parts. When it comes to unfair competition principles, decisions can be unpredictable

India: Trade dress and the importance of visual appearance
India

RNA Intellectual Property Attorneys

The rise of consumerism and a growing emphasis on how consumer products are sold and displayed tell us much about the gradual shift in the Indian courts’ consideration of trade dress

Italy: Design disclosure in the Facebook era
Italy

Bugnion SpA

A recent European Court of Justice decision on the disclosure threshold for registered designs has sparked much interest in Italy, given that trade dress in Italy is protected via registered designs

Mexico: Securing trade dress against competition
Mexico

Uhthoff, Gómez Vega & Uhthoff

While trade dress is not protected in Mexico, trademark and industrial design registrations can be used to demonstrate that unauthorised use of trade dress constitutes unfair competition

Russia: Choosing the right protection
Russia

Gorodissky & Partners

Trade dress in Russia can be protected as a trademark or an industrial design, and in many cases as both. The question of which form of protection is preferable must be considered carefully

United States: Full steam ahead for Jack Daniel’s trade dress suit
United States

Birch Stewart Kolasch & Birch LLP

A district court has given Jack Daniel’s the go-ahead to pursue enforcement of its trade dress at trial. This early finding provides some useful pointers on secondary meaning

Co-published editorialRoundtable

How to combat counterfeiting

Practitioners from China, Russia, the United States and Ukraine discuss practical anti-counterfeiting strategies which can be implemented by rights holders

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Issue 69