World Trademark Review Yearbook 2020/2021

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A simple, easy-to-use digest of trademark regulation in key jurisdictions across the globe.

Introduction

INTA and corporate social responsibility

International Trademark Association
Corporate social responsibility has become a strategic priority for most major brands and is viewed almost universally as a key pillar of success in the business world.

A more connected world

MARQUES
Susie Harris, general counsel of Plum Guide and chair of MARQUES, explains why small and medium-sized enterprises increasingly require global, integrated systems to help protect their IP rights.

Special focus

Best practice for managing a global trademark portfolio

CompuMark
Managing a global trademark portfolio can be a daunting task, even for an experienced trademark practitioner.

Hand in hand – legal certainty and EUIPO’s discretionary powers

Zacco
The principle of legal certainty is complex, but it is acutely felt if it is not implemented and has taken root in the administration and examination of government bodies.

Country chapters

Trademark procedures and strategies: Benelux

Turnstone
No separate trademark laws exist in the Netherlands, Belgium and Luxemburg.

Trademark procedures and strategies: Brazil

Bhering Advogados
As a general rule, the Industrial Property Law states that ownership of a mark is acquired through a granted registration.

Trademark procedures and strategies: Chile

Villaseca | Abogados
Trademarks are governed in Chile by the Industrial Property Law (19.039) and Law 20.160.

Trademark procedures and strategies: China

China Patent Agent (HK) Ltd
Natural persons, legal persons or other organisations that require exclusive rights to trademarks for their goods or services during production and business activities can apply for and own a mark.

Trademark procedures and strategies: El Salvador

Romero Pineda & Asociados
Rights in unregistered marks arise only where the relevant mark is sufficiently well known and this can be proved.

Trademark procedures and strategies: France

PROMARK
French trademark law confers no exclusive right to the owner of an unregistered mark.

Trademark procedures and strategies: Germany

COHAUSZ & FLORACK
Commercial designations are protected against newer identical or confusingly similar trade designations and trademarks once they are first used in Germany.

Trademark procedures and strategies: Greece

Dr Helen G Papaconstantinou and Partners Law Firm
Unregistered signs can constitute relative grounds for refusal and are protected under Articles 13 to 15 of the Law on Unfair Competition.

Trademark procedures and strategies: India

Anand and Anand
In India, trademarks are protected through a combination of both specific statutes (eg, the Trademarks Act 1999) and ancillary legislation.

Trademark procedures and strategies: Israel

Pearl Cohen Zedek Latzer Baratz
According to Israeli law, there is no specific use requirement for establishing the mentioned rights. Each case is judged on its own merits.

Trademark procedures and strategies: Japan

Nishimura & Asahi
The Trademark Act and its related regulations govern the registration and protection of trademarks in Japan.

Trademark procedures and strategies: Malaysia

Henry Goh & Co Sdn Bhd
Trademarks in Malaysia are governed by the new Trademarks Act 2019 and the Trademarks Regulations 2019, which came into effect on 27 December 2019.

Trademark procedures and strategies: Mexico

Basham, Ringe y Correa SC
The current administration is planning on reforming the current legal framework.

Trademark procedures and strategies: Poland

Allen & Overy, A. Pędzich sp. k.
Poland’s legal regime of national trademark rights is regulated mainly by the Industrial Property Law (30 June 2000).

Trademark procedures and strategies: Portugal

Baptista Monteverde & Associados
In general terms, trademark rights are only acquired through registration. Unregistered marks cannot award exclusive rights but can eventually be enforced on the grounds of unfair competition.

Trademark procedures and strategies: Romania

Nestor Nestor Diculescu Kingston Petersen
The Romanian trademark system is based on the first-to-file principle and registration is possible without the need to show genuine use.

Trademark procedures and strategies: Serbia

Popović Popović & Partners
All natural or legal persons involved in trade can apply for and own a mark. It is not necessary to prove such activity.

Trademark procedures and strategies: Spain

Grau & Angulo
Distinctive signs are principally governed by the Trademark Act (17/2001), which has been partially modified by Royal Decree-Law 23/2018 in order to incorporate EU Directive 2015/2436, and it is complemented by Royal Decree 687/2002.

Trademark procedures and strategies: Sweden

Brann AB
Establishment through use of a mark will give the same protection as if the mark is registered; however, the bar is set high for demonstrating establishment through use.

Trademark procedures and strategies: Switzerland

Meisser & Partners AG
Any natural or legal person can apply for trademark registration in Switzerland (restrictions apply to geographical marks).

Trademark procedures and strategies: Turkey

OFO Ventura
The processing time from initial filing to registration of national applications is approximately six to eight months in case of no office actions or oppositions.

Trademark procedures and strategies: Uganda

Apio, Byabazaire, Musanase and Company Advocates
Uganda does not allow owners of unregistered trademarks to institute proceedings for the prevention or recovery of damages.

Trademark procedures and strategies: United Kingdom

Penningtons Manches Cooper LLP
The United Kingdom left the European Union on 31 January 2020, triggering a transition period until (at least) 31 December 2020. During this period, the United Kingdom will continue to follow EU rules and regulations

Trademark procedures and strategies: United States

Lewis Roca Rothgerber Christie LLP
Trademarks that are used in interstate commerce, or foreign commerce that affects commerce in the United States, are eligible for federal and state registration. However, these requirements have been construed very broadly.