World Trademark Review Issue 72 April/May 2018
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
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.
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.
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.
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.
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.
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.
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.
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.
In the first of a two-part series, we outline the legislative framework for franchising in nine jurisdictions across Asia and South America.
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
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
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
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’.
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.
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.
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.
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
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.
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.
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.
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.
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.
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.
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.
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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