Analysis: Legal - World Trademark Review

Analysis: Legal

“We try to pick our battles carefully”: exclusive interview with AIG’s Shama Elliott

World Trademark Review speaks to Shama Elliott, IP manager at American International Group (AIG), who explains the value non-lawyers can add to trademark departments, sheds light on some of the key challenges facing insurance brands, and more.

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Amendments to Industrial Property Law due to come into force - key features explained

Earlier this year, the Mexican Senate approved a decree which introduced significant amendments to the Industrial Property Law. This update highlights the key changes introduced by the decree, which is due to come into force on 10 August...

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“Stop the uncritical worship of the God of Automation”: practitioners push back on end-to-end electronic filings

Practitioners have raised concerns about the USPTO's proposed move to implement end-to-end electronic filings, with current systems criticised and warnings that it could create an opportunity for trademark scammers...

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Cancellation of marks: Ministry of Economy's practices in implementing Trademarks Law create challenges

The Ministry of Economy’s interpretation of the provisions of the UAE Trademarks Law relating to the cancellation of trademarks has created challenges for mark owners and cancellation applicants.

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The struggle to interpret Indian jurisdiction in online transactions

When it comes to exercising jurisdiction in online disputes, Indian jurisprudence has some way to go – but case law analysis may provide critical insight.

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Rush to register French football star Mbappé's name highlights China's rampant trademark squatting problem

The rush to register Kylian Mbappé’s name following the 2018 FIFA World Cup serves as an important reminder that celebrities and businesses should have a strategy in place to protect their marks in China.

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New INPI resolution on administrative opposition procedure - what you need to know

Following the introduction of major changes to Argentina’s trademark legislation in January, the National Institute of Industrial Property has now issued Resolution P-183, which regulates the administrative opposition procedure.

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“Don’t panic” – new entrants to Madrid Protocol give mixed feedback on their experience since accession

​​​​​​​Law firm practitioners in jurisdictions that have adopted the Madrid Protocol in recent years have shared their experience in an exclusive survey. While some praised the system, other were scathing about its impact...

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New IP officials appointed against backdrop of great uncertainty

New IP officials, including a new director of trademarks, have recently been appointed in Venezuela. These appointments come in a climate of great uncertainty, mainly due to the suspension of the payment of official fees by foreign IP owners earlier this year...

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Draft regulations on corporate names issued for public consultation: key points highlighted

China’s General Administration for Market Regulation has issued a set of draft regulations on the registration of company names for public consultation. This update highlights several noteworthy features of the draft regulations.

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New presidential government system brings changes to Patent and Trademark Office's legal framework

The adaptation of the Patent and Trademark Office to Turkey’s new presidential government system created uncertainty as to the legal basis for the office’s existence. However, Presidential Decree No 4 has now re-established...

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“E-commerce platforms make huge efforts to protect brands’ rights”: exclusive interview with Groupon’s Pablo Rodriguez

Pablo Amat Rodriguez talks to us about his IP work at e-commerce brand Groupon. He reveals how he meets the distinctive IP challenges the trademark department faces, working with law firms, and much more...

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Well-known marks: approaches to fame in Europe

Obtaining well-known status for a trademark can be a powerful tool for rights holders. In the third of a three part series, this article considers the best route in key European jurisdictions

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Well-known marks: multijurisdictional approaches to fame in Asia

Different approaches must be used to secure protection for well-known marks in different countries. This article considers the best route in key Asian jurisdictions.

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Consumers “morally disgusted” by counterfeits, brands warned fakes “infect” genuine products

​​​​​​​A groundbreaking new study has found that most consumers feel “revulsion” from using counterfeit goods, with a warning that this feeling can be extended to genuine goods that are often copied and suggesting a new form of...

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Namibia introduces new Industrial Property Act – what you need to know

Namibia’s new Industrial Property Act will come into operation on 1 August 2018. This update highlights the most noteworthy changes concerning trademarks.

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UK government White Paper on future UK-EU relationship: small number of IP issues considered

The UK government’s White Paper on the future UK-EU relationship includes a limited number of proposals relating to intellectual property. Among other things, the United Kingdom will establish its own GI scheme.

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Well-known marks: multijurisdictional approaches to fame

Obtaining well-known status for a trademark can be a powerful tool for rights holders. However, different approaches must be used to secure enhanced protection. This three-part series considers the best route in 10 key jurisdictions, starting with the US.

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ICE’s anti-counterfeiting efforts highlighted as US politicians call for its abolition

Legislation was tabled yesterday in the US House of Representatives calling for the abolition of the Immigration and Customs Enforcement (ICE). It sparked a reminder on the agency's crucial role in the fight against counterfeit goods.

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"No closer to clarity" – UK's Brexit White Paper offers clues to future IP approach, but big questions remain

In the UK government's much-anticipated blueprint for the UK’s future relationship with the EU, IP rights are specifically addressed, but trademark practitioners will be left with many unanswered questions.

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Corruption and weak IP legislation identified as main drivers of counterfeit trade

​​​​​​​The main drivers that determine the likelihood of a country being involved in the trade of counterfeit goods have been identified by a new report from the European Union Intellectual Property Office.

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Issue 74