World Trademark Review Yearbook: A global guide for practitioners 2021/2022

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Welcome to the 13th edition of the World Trademark Review Yearbook.

At a time when brands are increasingly going global, and multijurisdictional coverage is required, quick and easy access to the latest registration and protection guidance is essential. The publication, which is firmly established as an essential guide to trademark law, provides legal professionals worldwide with a simple, easy-to-use digest of the structure of trademark regulation in key jurisdictions across the globe. It therefore allows practitioners to gain comparative insights into the pertinent issues in different countries, helping to inform their decision making at both national and international level.

In this latest edition we present in-depth analysis of trademark law in 19 key jurisdictions, as well as an exploration of the space between trademark law and copyright, and a comparison of trademark opposition proceedings in Germany, the European Union and the United States. We also present recent development on – and practice tips for the use of – the Madrid Protocol, as well as an assessment of the economic value of designs. Elsewhere, INTA expands on its responsibilities beyond intellectual property and the ‘where, why and how’ of franchising is answered.

Although the yearbook does not seek to provide specific legal advice and should not be read as such, it does provide a detailed comparison of some of the most important aspects of trademark law around the world. Only those firms and organisations with an unparalleled track record in the field of trademark law were invited to contribute to the yearbook, and I would like to thank all of them for their effort and continued commitment to this important project.

The WTR Yearbook has again been published in partnership with INTA, who I would like to thank for its continued assistance and support of the publication.

Introduction

Our responsibilities beyond intellectual property

INTA
A resounding call from INTA to our key constituents – our members around the world – has centred on the idea that the role of the trademark practitioner is evolving.

Special focus

Franchising and trademarks: where, why and how?

Donahue Fitzgerald LLP
For many trademark practitioners, franchise laws are an inconvenience. The knee-jerk advice to clients is to avoid franchising.

Madrid Protocol – recent developments and practice tips

Fross Zelnick Lehrman & Zissu PC
The Madrid System, which is administered by the WIPO, is a cost-effective option for trademark owners who want to obtain trademark rights in many important commercial jurisdictions quickly and efficiently by securing an international registration in accordance with the provisions of the Madrid Protocol (which all Madrid members have now joined) and the provisions of the Madrid Agreement.

The economic value of designs

Lubberger Lehment
When two products are equal in price, function and quality, the better-looking product will outsell the other.

Opposition – an underestimated weapon

Weickmann & Weickmann PartmbB
In the context of protecting trademark rights, an opposition is an underestimated tool to stop infringing activities from the beginning – even before infringing products and services appear on the market.

Protection of titles under copyright law and trademark law

Zacco
“A title is designed to catch the eye and to promote the value of the underlying work” (Mattel Inc v MCA Records Inc, 296 F.3d 894 (9th Cir 2002)).

Country chapters

Benelux

Turnstone
No separate trademark laws exist in the Netherlands, Belgium and Luxemburg. Benelux trademark law is governed by the Benelux Convention on Intellectual Property, the current version of which entered into force on 1 March 2019.

Brazil

Bhering Advogados
As a general rule, the Industrial Property Law states that ownership of a mark is acquired through a granted registration, following which the rights holder has the right to exclusive use of the trademark throughout the national territory.

Chile

Villaseca | Abogados
Trademarks are governed in Chile by the Industrial Property Law (19.039) (in force since 30 September 1991, modified by Law 19.996, in force since 14 December 2005) and Law 20.160 (in force since January 2007, regulated by Decree 236, published on 1 December 2005 and modified by Economy Decree 36 of 23 May 2012).

China

China Patent Agent (HK) Ltd
Different legal provisions have different requirements for the extent of use to establish unregistered trademarks.

El Salvador

Romero Pineda & Asociados
Only previously registered trademarks are subject to opposition on renewal.

France

PROMARK
French trademarks are governed mainly by Law 1991-7, which implements the EU First Trademarks Directive (89/104/EEC) and is codified in the IP Code.

Germany

COHAUSZ & FLORACK
The following are enforceable in Germany: German trademarks, EU trademarks and German trademarks based on international registrations, names and non-registered trade designations.

Greece

Dr Helen G Papaconstantinou and Partners Law Firm
Greece’s long-anticipated new trademark law was enacted on 20 March 2020. Law 4679/2020 has finally transposed EU Directive 2015/2436 into Greek law and brings the treatment of national trademarks in line with EU trademarks (as regulated by EU Regulation 2017/1001).

Israel

Pearl Cohen Zedek Latzer Baratz
While the Trademark Ordinance predominantly provides protection for registered trademarks, it also protects unregistered well-known trademarks.

Japan

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

Mexico

Basham, Ringe y Correa SC
Registration and enforcement of trademark rights in Mexico is regulated by a framework of local laws, regulations, treaties and precedents on specific legal loopholes or procedural matters.

Poland

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

Serbia

Popović, Popović & Partners
A trademark right is acquired by registration. Unregistered marks are not regulated by the Law on Trademarks, except for well-known and famous trademarks.

Spain

Grau & Angulo
Distinctive signs are principally governed by the Trademark Act (17/2001), which was 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, which was also modified by Royal Decree 306/2019 in order to adapt to the Trademark Act as amended.

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.

Switzerland

Meisser & Partners AG
The basic principles for trademark protection in Switzerland are contained in the Federal Act on the Protection of Trademarks and Indications of Source and the Trademark Protection Ordinance.

Turkey

OFO Ventura
At national level, the Industrial Property Code 6769 (10 January 2017) governs the principles, rules and conditions relating to the protection of trademarks, patents, utility models, designs and geographical indications.

United Kingdom

Penningtons Manches Cooper LLP
The United Kingdom left the European Union on 31 January 2020, triggering a transition period that expired on 31 December 2020.

United States

Lewis Roca Rothgerber Christie LLP
Trademarks are governed by federal and state law. The Lanham Act is a federal statute that governs the registration and enforcement of trademarks used in interstate commerce, or foreign commerce that has a substantial effect on US commerce.