World Trademark Review Issue 70

December 2017/January 2018

Search for the secret formula: measuring ROI for brand protection

In a KPI-driven corporate environment, return on investment is a central preoccupation. Yet this remains challenging to measure – particularly when it comes to brand protection
Trevor Little

Features

Brand valuation face-off – debating the merits of ranking tables

A passionate debate has erupted over the publication of brand valuation ranking tables. We brought two of the most high-profile parties together to state their cases and gave each an opportunity to respond. The result is thought provoking and, unsurprisingly, heated
Christof Binder and David Haigh

Crafting the perfect cease and desist letter

Drafting a letter demanding that an infringer cease its illegal activities is a standard task for many trademark practitioners. But each one needs to be carefully structured in order to achieve its objective – done well, a good cease and desist can actually lead to significant goodwill
Tim Lince

How to make sure promoted posts follow the rules

For corporate counsel, sponsored marketing posts are becoming an increasingly complicated issue. We look at how to comply effectively with UK and US practice codes to avoid any legal or PR headaches down the road
Jessica Elliott Cardon

Motives for a mark

In a groundbreaking piece of research, academics in the Netherlands have studied exactly why applicants file for trademarks. The results reveal a clear difference between the motives of so-called ‘innovators’ and ‘non-innovators’
Meindert Flikkema and Suzanne Rijsman

Protecting the looks of products in China

Infringers are getting smarter in China – they no longer copy trademarks directly but target a product’s look. So how can rights holders best protect unique packaging, creative shapes or innovative designs in the world’s biggest market?
Amy Hsiao and Christopher Shen

Uncertain road ahead for quality signs in Germany

The ECJ has clarified that individual marks must be used as indicators of origin in order for their use to qualify as genuine. The decision throws up several issues related to quality signs, most notably in Germany, where certification marks are not recognised
Richard Dissmann and Sarah Somboonvong

No magic cure – why product authentication will not stop Chinese counterfeiters

Several technology companies are promising to eradicate counterfeits from the Chinese marketplace as part of their marketing push. However, rights holders should be wary of trusting that product authentication will make a major dent in the battle against fakes in China
Dean Arnold

A new dawn for Kenya

The trademark landscape in Kenya is set to shift dramatically with proposed changes to the law. We examine some of the key developments and the issues that brand owners need to be aware of in order to protect their marks effectively in the east African nation
Daniel Wanjau Muriu and Peter Kamero

Tackling grey market goods in Brazil

Brazil has no legal definition of ‘parallel imports’, despite this being an issue that blights many international brands. However, rights holders can take measures to combat this practice in the Brazilian marketplace
Paula Mena Barreto

Four years on – how Mexico stepped up to Madrid

It is now four years since Mexico officially ascended to the Madrid Protocol. We examine how local practitioners have been adapting to this new trademark ecosystem and see what common issues are arising
Alonso Camargo

Changing tides at ICANN

Amazon’s recent successful independent review panel decision with regard to the ‘.amazon’ gTLD could have a significant effect on ICANN governance
Brian Winterfeldt, Phil Marano and David Rome

Columns

Brexit: European Commission sets out its position on intellectual property

With the first three rounds of negotiations complete, the European Commission has published its position paper on intellectual property. The content provides possible answers to some of the key questions surrounding EU trademarks post-February 2019
Stephen Hodsdon

What I have learned: private practice versus in-house

Timely advice for both in-house and private practice lawyers, from someone who has been successful in both spheres
Moutaz Abdullat

Artificial intelligence: A meeting of minds

Advances in technology have been transforming the workflow of trademark practitioners over several years. We take a look at how the rise of artificial intelligence will change the status quo even more
Rob Davey

Perspectives

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

Co-published editorialCountry Correspondents

Trademarks in the food and beverage industry

Canada: Changing the recipe: the amended Trademarks Act
Canada

Bereskin & Parr LLP

Amid a string of changes to the Trademarks Act, food and beverage brand owners should be aware of the potential impact that this new legislation will have on their trademark rights in Canada

China: Fake food: curbing food and beverage counterfeits in China
China

Kangxin Partners PC

With the rise of fake food in China and increasing levels of concern from the government and consumers, brand owners should act quickly to protect their IP rights from the fallout of counterfeiting

Germany: Uphill battle for protection of 3D confectionery marks
Germany

Meissner Bolte

The confectionery industry is awash with three-dimensional trademarks. However, EU case law demonstrates that brand owners face considerable difficulties registering and protecting their marks

India: Food and beverage products in the branding crosshairs
India

RNA Intellectual Property Attorneys

As the Indian food and beverage market becomes increasingly alluring to to brand owners, the courts are witnessing an eruption in trade dress protection and advertising disputes

Italy: Salumi shows how innovative packaging can be crucial for food and beverage sector
Italy

Bugnion SpA

Rights holders’ innovative use of design demonstrates that in the modern market, food packaging is a vital advertising tool which is also eligible for IP rights protection

Mexico: Make your product pop – but make sure it is well protected
Mexico

Uhthoff, Gómez Vega & Uhthoff

Products need innovative strategies to stand out on shop shelves, especially in the food and beverage sector. While such marketing can increase sales, it also risks compromising trademark protection

Russia: Shifting tides of protection in the food and beverage sector
Russia

Gorodissky & Partners

Although trade dress is an essential tool for brand owners trying to boost consumer recognition in the food and beverage sector, enforcing trademark protection can be a thorny issue

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Issue 70