World Trademark Review Issue 69

October/November 2017

Seeing in the dark

Since our investigation three years ago, the dark web has continued to grow rapidly. World Trademark Review returns to this hidden part of the Internet and discovers a place of turmoil and uncertainty which poses a greater danger to brands than ever before
Tim Lince

Features

Brexit, legal reforms and a financial squeeze: users have their say on EUIPO changes Premium content

It has been quite a year for trademarks in Europe, with further turbulence ahead. As the EU Intellectual Property Office looks to the future, we asked users to assess its current performance and predict whether imminent industry developments will help or hinder it
Trevor Little

The second wave: upcoming changes to European practice

The second swathe of amendments stemming from the European trademark reform package becomes a reality this October. For users, this means taking account of several important changes
The EU Intellectual Property Office

From 20 to over 2,000 – two decades at the EUIPO Boards of Appeal

In 1997 20 appeals were received in the first full year of the boards of appeals’ activity; fast forward to 2016 and that number topped 2,600. The boards have evolved their practices over the past 20 years – but preparations for the future continue
Théophile Margellos

Adding substantial value to shapes – why this absolute ground should be abolished

The difficulties of protecting shapes and product designs as three-dimensional trademarks have been widely chronicled. However, the latest changes to the EU Community Trademark Regulation only extend the existing uncertainty with regard to absolute grounds for refusal
Anders Poulsen

Impact of the upcoming unified IP system

The upcoming unified Eurasian Economic Union system aims to establish more efficient mechanisms for obtaining protection for trademarks and appellations of origin – but it remains to be seen how it will function
Tatyana Kulikova and Julia Zhevid

Lessons from the ADR front line

While many articles on alternative dispute resolution discuss the available types and how to select a mediator, more critical insight can be obtained by considering key lessons from real-world dispute resolutions
Leslie J Lott

IP business management: a new operational paradigm for the 21st century

The legal business landscape has shifted significantly over the past decade, with IP departments forced to do more with less. It has also resulted in a need to align the management of IP assets with overall business objectives in a bid to demonstrate real return on investment
Eyal Iffergan

Landlord liability for counterfeits – coming soon to Canadian premises near you?

In Canada, there is as yet no clear precedent for holding a landlord liable as an intermediary for dealings in counterfeits on its premises. However, a case launched last year by Louis Vuitton could be about to change this
Tania D’Souza-Culora, Scott Foster and Kristen Kilroy

Damages trends in China: what the shifting landscape means for rights holders

The 2014 reform of the Trademark Law was a watershed in terms of possible damages for trademark infringement. Now the onus is on rights holders to ensure that they collect evidence which bolsters their case
Jill (Yijun) Ge

Columns

Vietnam: Up against the system

Limitations in Vietnamese laws on trademark use are creating a number of enforcement challenges for rights holders
Tran Manh Hung, Tran Kieu Hoa and Tao Minh Hung

Costa Rica: Battling for acquired distinctiveness

Under the current trademark law it is highly difficult to bring acquired distinctiveness as an argument to overcome a refusal for lack of distinctiveness in Costa Rica – despite international pressure
María del Pilar López and Esteban Monge

Ownership: Who owns a trademark when the relevant contract is silent?

The Third Circuit has become the latest forum to determine how courts should resolve issues of trademark ownership between a manufacturer and the exclusive distributor of a particular product when the parties’ contract is silent on the issue
Perry J Viscounty and Jennifer Barry

Examiners’ perspective: best practice when applying for non-traditional marks

Registering non-traditional marks in the United States presents challenges seldom encountered when registering more familiar word and symbol trademarks. Representatives from the US Patent and Trademark Office explain how to overcome some of the most common hurdles

Perspectives

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

Co-published editorialCountry Correspondents

Protecting unregistered trademarks and other commercial signs

Canada: Unregistered does not mean unprotected
Canada

Bereskin & Parr LLP

Unregistered trademarks have the potential to block registration and affect the exclusivity of registered marks in Canada. Clearance searches of unregistered marks are therefore crucial before rights holders enter the marketplace

Germany: Protection for apps remains problematic
Germany

Meissner Bolte

Protection for unregistered marks still varies according to the sector. The Federal Supreme Court’s wetter.de decision demonstrates that requirements for distinctiveness are higher for mobile applications than other titles of works

India: Courts step up to protect unregistered trademarks and trade dress
India

RNA Intellectual Property Attorneys

While rights holders face numerous issues when it comes to protecting unregistered trademarks with no direct or substantial sales in India, the courts have started to take a more liberal approach

Italy: Grapes of wrath: coexistence of unregistered marks in the wine industry
Italy

Bugnion SpA

Juggling the coexistence of registered and unregistered trademark rights on Italian family names in the wine industry is a centuries-old practice which the courts appear uninterested in changing

Mexico: The challenges of a first-to-file regime
Mexico

Uhthoff, Gómez Vega & Uhthoff SC

While protection for unregistered marks is available, there is no substitution for registration. However, where marketing strategies result in a rights holder going into business without a registration, certain legal rights allow the mark owner to continue using its mark

Russia: Utilising the full range of protection
Russia

Gorodissky & Partners

Rights holders considering entering the Russian market should be aware that, in addition to trademarks and industrial designs, a range of IP tools is available to enhance rights protection

United States: Protecting unregistered trademarks under common law and unfair competition
United States

Birch Stewart Kolasch & Birch LLP

Unregistered trademarks and commercial signs can be protected under common law rights and unfair competition claims. However, practical issues must be considered when applying such protection

Co-published editorialRoundtable

Licensing best practice

Experts from Canada, Germany, Russia and the United States discuss cutting-edge strategies for the creation of resilient licensing programmes which can maximise the prospects of commercial success while reducing risk

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Issue 69