Under-resourced and under-appreciated: now is the time for trademark teams to raise their corporate profile

In the first of a series of Saturday opinion columns we consider what 2021 will look like for corporate trademark professionals, and how they should respond.

Under-resourced and under-appreciated: now is the time for trademark teams to raise their corporate profile
How lawyers tackled infringing Michael Jordan Chinese translation marks that were too old to invalidate
15 Jan 2021

How lawyers tackled infringing Michael Jordan Chinese translation marks that were too old to invalidate

GEN Law Firm partner Steve Zhao and associate Pei Lyu reveal the intricacies of the arguments that made them successful in the Shanghai court.

Analysis of the top representatives of Chinese applicants at USPTO reveals strange ebb and flow in workloads
15 Jan 2021

Analysis of the top representatives of Chinese applicants at USPTO reveals strange ebb and flow in workloads

Trademark data shows peculiarities in the mega filers’ activity, particularly within Jonathan Morton’s portfolio

Featured

15 Jan
2021

Hendrix family trademark dispute; ICANN 70 confirmed; Australian company changes ‘racist’ branding – news digest

In our latest round-up, we look at the NCAA pausing an athlete name, image and likeness vote, the US IP Alliance launching with the aim of raising IP awareness, Authentic Vision and ATQ Germany teaming up, and much more. Read more

15 Jan
2021

Notorious Markets List 2020: USTR resists call to include US platforms as Alibaba and Amazon remain

The Office of the US Trade Representative has released the findings of its 2020 Review of Notorious Markets for Counterfeiting and Piracy. Read more

15 Jan
2021

Stricter requirements for proving use of a trademark through invoices

The National Service of Intellectual Rights of Ecuador has recently issued several resolutions which have radically changed the criteria for using invoices as proof of use. Read more

News

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14 Jan 2021

USPTO highlights role of government subsidies and mandates in growing tide of trademarks from China

USPTO publishes scathing report into the influx of trademark applications from China, claiming that many “lack value and clutter the trademark register”. Read more

12 Jan 2021

Elon Musk brand confusion; Burger King rebrand; Subway to expand licensing footprint – news digest

In our latest round-up, we look at Unilever offloading the Bertolli business, thousands of counterfeit designer masks seized in Kentucky, South Korea adopting a Vegan certification mark, and much more. Read more

12 Jan 2021

Live updates: IP offices implement measures in wake of coronavirus crisis

As the novel coronavirus epidemic continues to spread across the globe, WTR provides an updated look at measures that national IP offices have launched in response. Read more

11 Jan 2021

Brand associations provide a blueprint for educating consumers on counterfeits and piracy

A number of brand associations have highlighted the need for social media companies and online platforms to step up anti-counterfeiting messaging in efforts to educate US consumers. Read more

Analysis

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14 Jan 2021

Renault disappears and Aston Martin returns: brand lessons from two teams in the 2021 F1 season

As Renault F1 and Racing Point rebrand to Alpine F1 and Aston Martin respectively, WTR asks brand experts whether these are savvy moves or will cause consumer confusion. Read more

13 Jan 2021

The rise of clone perfume: a growing challenge for fragrance brands?

In an interview with WTR, the owner of a business that sells ‘smell-alike’ perfumes reveals why the popularity of cloned fragrances is on the rise, and why he believes using their own brand avoids any potential legal risk from major perfume companies. Read more

13 Jan 2021

Tracking fakes: revealing the most popular regions for buyers of counterfeit goods

New research from WTR reveals where people searching for counterfeit goods are residing, uncovering a significant difference between brands. Read more

8 Jan 2021

How the French IP office educates the public on IP systems

Pascal Faure, CEO of INPI, explains how the office engaged the public in IP matters in 2020 through online courses and annual awards. Read more

Legal updates

15 Jan 2021

Protocol on Eurasian design patents to enter into force in March 2021

The Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention will enter into force for Kyrgyzstan, Azerbaijan and Armenia on 17 March 2021. Read more

14 Jan 2021

Courts uphold TRAB decision to invalidate trademark consisting of Mongolian place name

These invalidation proceedings involving the mark 阿尔山 - the Chinese transliteration of ‘Aershan’, a city in Inner Mongolia - have been selected as one of the top 10 “Exemplary Cases of Trademark Grant and Affirmation of the Year 2019”. Read more

14 Jan 2021

The digitalisation of trademark records in Nigeria: urgent need for action

While an online filing platform was introduced at the Trademark Registry in 2012, all other stages of processing applications are still conducted manually - and the problems linked to these manual processes only became more pronounced during the recent lockdown. Read more

13 Jan 2021

CJEU: reproduction of shape or appearance of PDO-protected product prohibited in certain cases

In this case involving Morbier cheese, the Court of Justice of the European Union considered whether the shape or appearance of a product may infringe a protected designation of origin. Read more

13 Jan 2021

Fifth Circuit: no preliminary injunction in boozy beverage trademark fight

With a booming market for hard seltzers and ready-to-drink cocktails, disputes over brand names have inevitably followed. Here, Future Proof Brands requested a preliminary injunction against Molson Coors’ entry into that market. Read more

Insight

12 Dec 2020

Why Mexico needs clearer publicity rights

With image rights protected mainly by the Federal Copyright Law, the overlap between an individual’s right to control use of their image and the automatic copyright established on behalf of an author can lead to courtroom conflicts. Read more

12 Dec 2020

EU image rights: when the product is us

In the absence of a harmonised EU law on image rights, individuals are forced to rely on a combination of copyright and human rights claims to protect their most unique asset online – their own image. Read more

12 Dec 2020

My name, my face, your trademark? Protecting publicity and image rights in China

A series of high-profile cases has seen publicity and image rights in the spotlight in recent years. Although the laws protecting these rights can be broad, a well-thought-out strategy with evidence of reputation will see celebrities triumph over bad-faith filers. Read more

12 Dec 2020

Social media and the right of publicity: what advertisers need to know

With no US federal right of publicity and the distinction between celebrities and non-celebrities becoming increasingly arbitrary, companies looking to advertise their products through the likenesses of individuals must be up to date with the latest case law in order to get a clear picture of the risks involved. Read more

Events

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27-28 January
2021

IP Risk Management 2021

IP is one of the most important assets a business can own and is increasingly prominent on the corporate agenda. While budgets get tighter and resources scarcer, threats continue to grow. All the while, IP leaders must ensure they are protecting their assets and proactively mitigating the risks surrounding them. WTR’s IP Risk Management event, live on Zoom on January 27 and 28 2021, will focus on key strategies, best practices and lessons learned for identifying, measuring and mitigating IP risk.

15-19 March
2021

WTR Connect Spring 2021

WTR Connect returns to Zoom for a week of purpose-built trademark and brand protection discussions with the world’s leading experts. From March 15-19, WTR will be hosting more than 20 individual interactive digital sessions live on Zoom, each designed to facilitate discussion, benchmarking and the sharing of best practice around key topic areas and challenges facing trademark and brand leaders.

Brand Strategy Southeast Asia 2021

With global trade tensions showing no signs of abating, Southeast Asia looks set to benefit as manufacturers shift strategic facilities into the region - further boosting the burgeoning tech and R&D sectors. However, this growth will place unprecedented pressures on an already uneven IP landscape and rights-owners, both international and home-grown, will need to navigate with care.

Against this background, IAM is pleased to announce the return of our combined programme: IPBC Southeast Asia, hosted by IAM, and Brand Strategy Southeast Asia, presented by World Trademark Review, to the Grand Hyatt Singapore on September 2021.

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