WTR weekly digest
10 May 2018
Editor's round-up
This week on World Trademark Review we spoke with local experts to explore the implications of plans unveiled by China’s trademark office to drastically reduce filing times. The office has announced that filing review times will be reduced to six months by the end of the year and to four months by 2020. The market analysts we spoke to expressed confidence that these targets will be hit and were optimistic that the quality of registrations will be maintained. However, there are some potential challenges ahead.

Turning our attention to the United Kingdom, we took a deep dive into the country’s trademark scene, examining how Brexit has affected filing strategies, inspecting brand value trends, and analysing the stellar performance of the UK IP Office. We also examined a much-delayed decision in an appeal against the refusal of a Class 32 UK application for BREXIT was dismissed. Notably, the decision contrasts with a recent EUIPO board of appeals decision, which gave the green light for a BREXIT mark.

Elsewhere, we scrutinised the latest data from Lex Machina, which suggests that US trademark litigation filing numbers will be flat in 2018 – potentially ending a four-year decline. Finally, we reported on a study that revealed the brand logos which appear the most on Instagram and Twitter, with adidas and Nike leading the pack.

Trevor Little


Legal updates
European Union No trademark use? Shipment of Apple iPhone screens with obscured logos found not infringing
European Union New Trademark Bill catches Nigerian stakeholders off guard
European Union ECJ clarifies test to determine whether use of earlier sign is significant
European Union UDRP: owners of less well-known marks may have difficulty proving that registrant targeted their brand
European Union Release of '.fm' emoji domains: dotFM set to land windfall thanks to premium domain names
European Union 3D Kit Kat mark: advocate general delivers further blow to Nestlé
Thought Leadership
  Editha R Hechanova
Editha R Hechanova
Global insight
Philippines | Hechanova Bugay Vilchez & Andaya-Racadio
Authors: Editha R Hechanova, Maria Leah R Lara
Opposition: Any person who believes that he or she would be damaged by the registration of a mark may file an opposition to the trademark application within 30 days of its publication. Opposition proceedings are summary in nature; thus, there is no trial and the parties must submit the necessary evidence to prove their positions. Read more
  Mauricio Mondragón Velázquez
Mauricio Mondragón Velázquez
In focus
Mexico | Uhthoff, Gómez Vega & Uhthoff
Author: Mauricio Mondragón Velázquez
Mexican law follows international standards with regard to trademark licensing, and licensors can benefit from a licensee’s use of their mark even where the agreement has not been recorded. However, the local rules governing ownership in these circumstances are less clear. Read more
WTR 1000 - jurisdictional analysis & rankings
Japanese companies understand that expansion in the mature domestic market is increasingly hard to bring about and, therefore, to increase revenues they are investing more in their overseas operations. Home-grown brand owners appear to be more willing to enforce their rights, while companies that traditionally filed a lot of IP applications simply for the sake of ownership and to exclude others are now looking to do more with their intellectual property in order to develop commercial advantages. Read more
Featured firm
Ballas, Pelecanos & Associates LPC is a long-established (1930), full-service business law firm, organised in specialist practice groups, among which the IP group holds a prominent position. Its members have extensive international experience in all contentious and non-contentious IP matters. The firm’s trademark practice has been ranked as a first-tier practice and has been successfully handling hundreds of trademark cases for many internationally renowned companies. Read more
Auto IP Europe 2018
Auto IP Europe 2018
May 17 2018 – Munich, Germany
The automotive market is a landscape of unabating change and intellectual property is quickly moving up the corporate agenda. Now more than ever before, patenting, brand protection, litigation, licensing and collaboration are vital not just for IP strategies, but for success. Building on two years of success in Detroit, IAM’s inaugural Auto IP Europe will offer IP professionals in the automotive industry a unique platform on which to learn, share best practice and discuss the latest strategies to exploit and protect their intellectual property and maintain a competitive advantage. Read more
IPBC Global 2018
IPBC Global 2018
June 10-12 2018 – San Francisco, United States
IAM’s 11th annual IPBC Global offers an unrivalled opportunity to put yourself at the heart of discussions involving those who make the world’s IP weather. Featuring top-level IP business experts, the programme will provide key strategic insights into cutting-edge value creation issues and offer deep insights into how corporate executives can most effectively tackle the challenges posed by the constantly changing IP landscape. It is the one IP event that senior executives always make sure to attend and the one you cannot afford to miss. Read more