World Trademark Review Issue 68 August/September 2017

USPTO heads into uncharted waters

While trademark applications at the US Patent and Trademark Office continue to rise, a new administration and the unexpected resignation of Director Michelle Lee have raised questions as to how its future looks
Tim Lince


WTR Industry Awards 2017

On May 23 2017 World Trademark Review announced the winners of the 11th WTR Industry Awards at an exclusive ceremony at the Museum of Contemporary Arts in Barcelona. 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. In the following articles we speak to the winners and explain why they were judged to be the leading examples of industry best practice.

Global discovery: an international comparison

Disclosure is often one of the first steps in any IP dispute, yet the rules across different jurisdictions can be confusing, as a comparison of the regimes in England and Wales, France and the United States demonstrates
Margaret Arnott

Cutting through coexistence agreements in China

Coexistence agreements can be a more palatable solution to disputes than litigation. However, while China’s Trademark Law allows coexistence under certain circumstances, there are risks of which all parties should bear in mind
Paula Pei

Trademark licensing: a best practice guide

While licensing offers a range of benefits to brand owners, there are numerous pitfalls to avoid. From partner selection to terminations, licensors must take care to ensure that their extensions are win-wins rather than costly missteps
Rami S Yanni

Notorious markets: where to police

In the second 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 Asia and Africa
Say Sujintaya and Carlos Dávila-Peniche

The growing world of ‘.brands’

Five years on from the introduction of new generic top-level domains, more and more ‘.brands’ are going live, giving potential applicants the opportunity to assess their current deployment
Nick Wood

The social perspective

The global user base of social networks continues to grow, and so too does the need for robust IP enforcement online. We asked leading platforms to advise on how brand owners can get the most out of their IP rights tools

Preparing for change: counting down to Canada’s trademark amendments

Amendments to the Trademarks Act will likely come into force in 2019. Brand owners should prepare and improve their strategies for protection, trademark acquisition and enforcement in opposition venues
Grant W Lynds

The risks of personal branding

Recent changes to EU trademark law have made it easier to take action against infringing trade names. But how should companies approach situations in which the alleged infringer is an individual trading under his or her own name?
Ranee van der Straaten


Varsity Brands opens the door to increased litigation

In Varsity Brands v Star Athletica the US Supreme Court both provided answers and raised more questions surrounding design-related copyright
Stephen Shaw and Laura Kees

The rise of trademark trolls

Much has been written about the rise of so-called ‘patent trolls’, but a similar phenomenon arguably exists in the trademark world. For brand professionals, the key to counteracting this threat is careful strategising from the outset
Nathalie Dreyfus


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

Co-published editorialCountry Correspondents

Publicity and image rights

Canada: The cult of personality (rights)

Bereskin & Parr LLP

In the social media age, protection for personality rights can be found in Canadian trademark law under the torts of misappropriation of personality and passing off, and privacy statutes

China: How Michael Jordan transformed publicity rights in China

Kangxin Partners PC

Much progress has been made in recent years when it comes to protecting name and image rights, and to fighting against bad-faith registrations in China

Germany: Case-by-case approach to image rights

Meissner Bolte

In Germany, admissibility of the publication of images rests on the facts of the case. Recent Federal Court of Justice case law could offer guidance on the extent of the right to control one’s own image

India: It’s all in the name

RNA Intellectual Property Attorneys

Modern technology raises a number of issues surrounding celebrities’ online publicity rights. Without relevant legislation, jurisprudence has evolved through various court decisions

Italy: Italy’s robust image rights regime

Bugnion SpA

Italian law establishes a robust and far-sighted legal regime for the protection of image rights – which are viewed as an aspect of privacy and thus a fundamental human right

Mexico: Constitution provides solid basis for image rights regime

Uhthoff, Gómez Vega & Uhthoff SC

Publicity and image rights in Mexico are protected through different legal statutes, all based on the constitutional rights to privacy, freedom of speech and expression

Russia: Russia provides up-to-date protection for image rights

Gorodissky & Partners

Image rights are designed to protect a person’s appearance and ensure privacy. Although they are similar to IP rights, they are in fact regulated by different rules

United States: Copyright is a different ball game when it comes to athletes’ photos
United States

Birch Stewart Kolasch & Birch LLP

The appeal court opinion in Maloney v T3 Media highlights the limitations on publicity rights when claims are pre-empted under the US Copyright Act

Co-published editorialRoundtable

Pharmaceutical brands in the Americas: practical strategies for a fast-moving sector

Experts from Canada, the United States and Venezuela discuss cutting-edge strategies for the creation, protection and exploitation of brands in the pharmaceutical industry


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Issue 74