World Trademark Review Issue 74 August/September 2018
With a 10% rise in trademark applications mostly spurred by Chinese filings flooding the USPTO in 2017, questions have been raised about whether the office can cope with this influx – both now and in the future.
Geographical indications have hit the headlines in recent months, with mainstream debate grappling the extent of their protection – but why have they become such a hot political issue?
The Scotch Whisky Association’s director of legal affairs pulls back the curtain to reveal how the industry protects its heritage.
In 2017 China’s courts handled more trademark infringement cases than the local administrations for industry and commerce. With the enforcement landscape evolving so rapidly, analysis of litigation data can provide unique strategic insight into brand protection efforts.
August Zhang and Charlotte Trinh
“You do what you can to reduce risk”: exclusive interview with Rovio Entertainment’s Robert Hagelstam
Legal counsel for IP rights at Rovio Entertainment, best known as the owner of hit mobile gaming app Angry Birds, Robert Hagelstam explains how the company won its high-stakes long-running battle with Chinese trademark squatters, reveals his approach to securing rights in the fast-moving mobile apps sectors, and told us that many brands tend to over-file for trademarks.
With the legalisation of recreational cannabis impending in Canada, new business models and opportunities are emerging for a surprising variety of brand owners.
Monique M Couture
Chinese players fail to make the cut in the fashion world as major brands prove resilient: exclusive analysis
Examining the apparel sector, we show that the leading brands have remained robust, analyse how filing patterns have changed, and reveal that Chinese brands have failed to make the cut in the list of the world’s leading fashion brands.
Continuing our series of interviews with WTR 300-ranked corporate trademark counsel, World Trademark Review catches up with Jerry Xia, deputy general counsel and chief IP counsel, Asia Pacific, for Fortune 100 conglomerate Honeywell. He shares his insights into how the Chinese brand protection landscape has developed in recent years and offers some practical tips for managing trademarks in the region.
UK trademark scene post-Brexit: a world-class IP office dealing with uncertainty in a volatile brand environment
In our country data report this week, we provide a breakdown of the UK trademark market – examining how the Brexit referendum has affected filing strategies, inspecting how domestic brand values have changed in the last few years and analysing the stellar performance of the UK IP Office.
While the GDPR entered into force on 25 May, the provisional model adopted by ICANN to bring the WHOIS database into compliance is a compromise that does not seem to meet the strict requirements of the new European regulation or answer the needs of IP practitioners.
With Africa proving particularly vulnerable to the sale of counterfeit goods, we take a look at some of the problems and solutions from a wide swathe of nations across the continent.
Duncan Maguire and Paul Ramara
With licensing now a $100 billion industry, it has become a very attractive and widely used business tool, but companies seeking to leverage brand awareness, build brand equity and drive new revenues need to stay on top of the latest market trends in order to succeed.
On 22 May 2018 World Trademark Review announced the winners of its 12th Industry Awards at an exclusive ceremony at the Seattle Art Museum. The awards are designed to recognise the vital work carried out by in-house trademark counsel and to identify the teams and individuals that are performing their functions to the highest possible standards.
After his invaluable contribution to the global trademark community was recognised at the WTR Industry Awards, J Thomas McCarthy sat down with us to reflect on an illustrious career
Trademark policing in a GDPR world: the state of play with WHOIS and China’s trademark office to drastically cut filing times
The often-hidden blight of mental illness is something that can affect anyone, especially those in a highly pressurised working environment such as the IP industry. We look at how best to recognise and address these issues for the benefit of the entire sector.
Trademark-related quotes, opinions and observations from around the globe
Co-published editorialCountry Correspondents
Jurisdictional challenges for fashion and luxury brands
Bereskin & Parr LLP
Canada presents options for those seeking to protect and enforce rights in luxury brands, including effective mechanisms and alternatives for strategic defence and enforcement.
Kangxin Partners PC
Regionality is a well-known characteristic of trademark protection and brings particular jurisdictional challenges for fashion and luxury brands. In China, these challenges include trademark squatting and parallel imports.
RNA Technology and IP Attorneys
While luxury brands are increasingly entering the Indian market, proving India’s potential as a destination for luxury products, they face some formidable challenges, including high import duties, lack of quality retail space and the ever-present threat of counterfeiting.
Some so-called ‘legal fakes’ in Italy have so successfully fooled consumers and won over luxury and fashion brand fans that they have essentially supplanted the original brands, which are yet to conquer the country.
Uhthoff, Gómez Vega & Uhthoff
Innovation, notoriety, protective registration and counterfeiting are key challenges for fashion and luxury brands. Fortunately, Mexico has a complex system of enforcement in place.
Gorodissky & Partners
Anti-counterfeiting measures will never succeed in removing all counterfeits from the market, but they do make it significantly more difficult for counterfeiters to produce and sell fakes.
ATG Law Firm
Turkey is a tourist hot spot – but as the visitor numbers escalate, so too do the fake products. A good brand protection strategy can help to reduce the visibility of counterfeit products riding on the coattails of a trademark.
Everything old is new again? Protecting traditional fashion designs as non-traditional marks
Birch Stewart Kolasch & Birch LLP
A pending US district court case on a fashion company’s efforts to protect a handbag design as a non-traditional trademark under US law – even though variations of the design have long been in the public domain – should provide much-needed clarity on this area.
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