World Trademark Review Issue 72 April/May 2018

America first... for now: how Chinese and European brands are closing the gap

The United States may be putting itself first, but on a global scale its long-dominant brands are facing increasing pressure. It is not just China that is closing the gap – so is Europe. If US brands are to stay on top they will have to lean into the future and figure out what to do next
David Haigh


Pushing the boundaries – identifying the world’s most innovative IP offices

As national IP registries are encouraged to become innovation agencies and to offer non-core tools and services, we once again identify those leading the way – and the offices trailing behind
Tim Lince

Brazil’s static filings, bustling service sector and backlog solution

A deep dive into trademark data in Brazil suggests that despite emerging from recession, there has been little to no growth in trademark filings in the country. Meanwhile, Paraguay remains the top choice for domestic applicants and the number of applications for service marks continues to climb.
Timothy Au

How bank brands must adapt to a new and evolving playing field

A data-driven examination of the banking sector reveals that Chinese bank brands are overtaking their US rivals, while customer focus, big data and multichannel delivery remain key trends.
Timothy Au

Brand Strategy China – critical insights on value creation and rights protection

World-class brand creation and protection professionals convened in Shanghai for World Trademark Review’s Brand Strategy China. The high-level knowledge-sharing event resulted in actionable. takeaways for those tasked with protecting and growing their brands in the region.
Trevor Little

The 10 most common mistakes in trademark portfolios – and how to avoid them

Analysing more than 30 trademark portfolios of mid-size to large multinationals carrying out business in the European Union reveals a surprising number of illogical filings, errors and gaps. The resulting checklist will support effective portfolio review.
Paul Tjiam

Plain crazy? Extending plain-packaging restrictions to alcohol and sugar

Following in the footsteps of tobacco regulation, momentum is building in support of plain packaging for alcoholic and high-fat, salt and sugar products. These industries should act early to head off the threat of increasing legislation.
Dominic Farnsworth

Embracing APIs: how IP offices could transform life for trademark attorneys

Following the results of the latest IP Office Innovation Ranking, technology company LawPanel explains why implementing open application programming interfaces could transform the trademark industry.
Thomas Brattli

An open data revolution

The Intellectual Property Office of New Zealand is a quiet pioneer when it comes to handling trademark data and now it wants the rest of the world to follow suit. In this article, it explains how it can be done.
Tanya Carter

Inside track: Hard Rock International

Hard Rock International is one of the world’s best-known leisure industry brands. World Trademark Review spoke to Rebecca Roby, its vice president of business affairs, about promoting seamless collaboration between legal and non-legal departments and the evolving challenges of managing Hard Rock’s IP rights around the globe.
Adam Houldsworth

Franchising: a global guide to brand monetisation

In the first of a two-part series, we outline the legislative framework for franchising in nine jurisdictions across Asia and South America.
Carlos Davila-Peniche

Protecting your brand in Mexico – how to avoid the unexpected

Over the past two decades, Mexico’s enforcement framework has improved immeasurably, although challenges remain. Trademark owners should consider a number of strategies in order to avoid any unpleasant surprises.
Abraham Diaz and Antonio Belaunzarán

Charting a course to success in reverse confusion claims and fair-use defences

The recent Marketquest decision offers important insight into reverse confusion claims, providing a road map for using a senior user’s mark comprising descriptive terms to market a junior user’s product.
Antony J McShane

Has China changed? Brand owners face an evolving and uncertain legal landscape

An analysis of recent decisions illustrates an evolving desire by China’s courts to take decisive action against infringers. However, there are a number of strategies that rights holders need to implement to maximise their chances of brand protection success.
Danny Awdeh and Yinfei Wu

Connecting with Customs at the factory of the world

Effective IP protection at the Chinese border is one of the most important aspects of any multinational enforcement strategy. We take a deep dive into how to shore up your defensive strategy for goods leaving the so-called ‘factory of the world’.
Fabio Giacopello

Registries are alive with the sound of trademarks

Registrations for sound trademarks are becoming more prevalent at major IP registries around the world. We look at some of the opportunities for sound marks, as well as common challenges and how to overcome them.
Sofia Arenal


New case puts fresh spin on domain name disputes in Russia

Domain name dispute practice in Russia is still underdeveloped, with a lack of legal provisions regulating rights in this area. However, a recent case provides important insight into practices across Russia and the Commonwealth of Independent States.
Victoria Soldatova

adidas case offers a valuable lesson in distinction

A key precedent set by Uruguay’s National Directorate of Industrial Property in a case involving adidas’s world-famous three-stripe mark affirms the importance of market surveys in cases of alleged lack of distinctiveness.
Natalia Paladino

The road to reform in Australia

IP Australia has proposed significant changes to the national trademarks regime following a report from the Productivity Commission.
Suzy Roessel and Anna Harley


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

Co-published editorialCountry Correspondents

Trademark registration and prosecution strategies

To play or not to play (the waiting game) in Canada?

Bereskin & Parr LLP

With the new Canadian trademark regime on the horizon, rights holders should consider whether to wait or to implement a filing strategy before the present system becomes a thing of the past.

All thought and no action is a losing combination in China

Kangxin Partners PC

Having a thorough knowledge of the trademark filing system is key to obtaining IP protection, but knowing what to register is only the first step to ensure that the process runs smoothly.

Top tips for trademark registration in India

India: RNA, Technology and IP Attorneys

The Trademarks Registry has implemented various changes to enhance the trademark filing system in India. An efficient registration strategy should help rights holders to reap the benefits of these updates.

Navigating the idiosyncrasies of the Italian filing system

Bugnion SpA

The Italian Patent and Trademark Office has made significant steps towards improvement over the past 10 years. However, foreign rights holders should be aware of the system’s various quirks.

Why local counsel is key to a strong filing strategy in Mexico

Uhthoff, Gómez Vega & Uhthoff

Rights holders seeking trademark protection, whether on a national or international basis, should consult
local counsel in order to formulate a filing strategy that holds up to Mexican customs and practice.

Choosing the right protection strategy for Russia

Gorodissky & Partners

Prosecution strategies are dictated by the circumstances of the rights holder’s business. Nevertheless, a smart choice of trademark and thorough registration are key to protecting IP rights.

Turkey welcomes letters of consent

ATG Law Firm

Pursuant to the new Industrial Property Law, similar or identical trademarks will no longer be considered absolute grounds for refusal if applicants submit a letter of consent for use from the prior owner.

The importance of correctly identifying goods and services in the United States
United States

Birch Stewart Kolasch & Birch LLP

Trademark rights are acquired through use of a mark in commerce. Applicants must correctly identify the goods and services with which their mark is intended for registration or risk refusal or cancellation.


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Issue 72