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Our Country Correspondents, leading firms from countries across the globe, take a detailed look at specific topics affecting trademark owners.

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Issue 77

February/March 2019

Top trademark challenges

The intersection between trademarks and labelling laws: as illustrated by the Canadian food and cannabis industries

Bereskin & Parr LLP

There are many Canadian trademark laws, regulations and statutes regarding selection, labelling and advertising in the food and recreational cannabis industries – all of which affect long-term branding rights and enforcement. read more
Practical tips for battling bad-faith filers in China

Kangxin Partners

Bad-faith filings are a major challenge in China; however, there are a number of tools available until further trademark regulation comes into force. read more
IP India report reveals that Trademarks Registry has more work to do

RNA, Technology and IP Attorneys

The Trademarks Registry has made substantial progress to clear the backlog of opposition cases. Nevertheless, with fierce competition among emerging economies, there is more to be done. read more
A call for change – trademark protection in Italy looks set to transform

Bugnion SpA

There is a need for change in Italy’s IP sector thanks to attempts to harmonise the national trademark regulations of EU member states and the global increase in technological innovation and online activity. read more
Mexican trademark registrations under Madrid System – convenient solution, but no guarantee

Uhthoff, Gómez Vega & Uhthoff

The Madrid System can be used as a simple solution for registering trademarks worldwide. However, it does not guarantee that a trademark will be accepted in all designated countries. read more
New court decisions provide fresh wisdom on trademarks in Russia

Gorodissky & Partners

Three recent cases look set to shake up trademark practice in Russia and could well have an impact for years to come – especially when it comes to parallel imports and the territorial principles of trademark protection. read more
Weeding out trademark infringers

Lewis Roca Rothgerber Christie LLP

For years the marijuana industry was an underground business, posing little threat to trademarks. But the recent ‘green explosion’ means that trademark owners must enforce their rights or risk their reputations. read more

Issue 76

December 2018/January 2019

Enforcement and litigation

Our privilege to serve – thoughts on Canada’s law of privilege

Bereskin & Parr LLP

Privilege protects certain information and communication from disclosure. In-house counsel – as legal and business advisers to a company – must understand the limitations of privilege and how best to create and maintain it. read more
Our privilege to serve – thoughts on Canada’s law of privilege

Bereskin & Parr LLP

Privilege protects certain information and communication from disclosure. In-house counsel – as legal and business advisers to a company – must understand the limitations of privilege and how best to create and maintain it. read more
New system makes it easier to enforce IP rights in China

Kangxin Partners PC

There has been much criticism regarding the difficultly of filing an IP dispute in China. However, the country is streamlining the process of navigating the judicial system, with the goal remaining to stop infringements. read more
New system makes it easier to enforce IP rights in China

Kangxin Partners PC

There has been much criticism regarding the difficultly of filing an IP dispute in China. However, the country is streamlining the process of navigating the judicial system, with the goal remaining to stop infringements. read more
How India is helping brands combat counterfeiting

RNA, Technology and IP Attorneys

India is removing policy barriers to attract investment, while policy initiatives designed to improve IP rights enforcement look set to yield results. However, the availability of infringing, counterfeit and lookalike products is also on the rise. read more
How India is helping brands combat counterfeiting

RNA, Technology and IP Attorneys

India is removing policy barriers to attract investment, while policy initiatives designed to improve IP rights enforcement look set to yield results. However, the availability of infringing, counterfeit and lookalike products is also on the rise. read more
Mexican trademarks and the Commercial Treaty of North America

Uhthoff, Gómez Vega & Uhthoff

The new North American Free Trade Agreement includes stronger measures against counterfeiting and piracy, including the ability to stop the entry and exit of suspected counterfeit products. read more
Mexican trademarks and the Commercial Treaty of North America

Uhthoff, Gómez Vega & Uhthoff

The new North American Free Trade Agreement includes stronger measures against counterfeiting and piracy, including the ability to stop the entry and exit of suspected counterfeit products. read more
Parallel imports in Russia: same game, different rules

Gorodissky & Partners

Parallel imports in Russia were once subject to the same treatment as counterfeit goods – but the golden age is over, as a compromise has been struck with regard to the national exhaustion of rights. read more
Parallel imports in Russia: same game, different rules

Gorodissky & Partners

Parallel imports in Russia were once subject to the same treatment as counterfeit goods – but the golden age is over, as a compromise has been struck with regard to the national exhaustion of rights. read more
Choose your weapon: litigating trademarks US-style

Lewis Roca Rothgerber Christie LLP

While there is an arsenal of tools with which a rights holder can address infringement, each requires careful consideration. The initial choice of remedy is a good place to start. read more

Issue 75

October/November 2018

Fluid trademarks (including slogans)

Canada moves ahead with fluid marks

Bereskin & Parr

Major amendments to Canada’s Trademarks Act are set to broaden the ability of brand owners to protect fluid marks, but will also introduce new obstacles to slogans. read more
Kapow! How to manage marks in the world of comic books

Kangxin Partners

Fluid marks can breathe new life into a brand and are frequently used to grab audience attention. However, a trademark must be used consistently to maintain its registration. read more
Safeguarding dynamic marks and slogans in India

RNA, Technology and IP Attorneys

Fluid trademarks and slogans are excellent marketing tools as they engage customers and improve sales, but their enforceability remains challenging. read more
Keeping it fresh: Italy’s new approach to distinctive signs

Bugnion SpA

Although branding companies and professionals have embraced the concept of fluid trademarks, it remains a highly complex field requiring close cooperation between IP attorneys and brand owners. read more
Can fluid marks be considered part of a client’s IP portfolio in Mexico?

Uhthoff, Gómez Vega & Uhthoff SC

Mexico recently introduced a number of legal amendments whereby the types of registration for distinctive signs were extended to include non-traditional marks. However, fluid mark protection remains a riddle. read more
Perpetual revolution: protecting fluid trademarks in Russia

Gorodissky & Partners

Fluid trademark strategies can strengthen brand recognition but the non-conventional nature of such marks needs to be understood to avoid weakening protection and risking non-use cancellation cases. read more
How to avoid pitfalls in Turkey when it comes to dynamic marks

ATG Law Firm

Fluid trademarks are fun and innovative marketing tools for brand owners, but as there is no express protection for such marks in Turkey, they can be legally unstable and vulnerable. read more

Issue 74

August/September 2018

Jurisdictional challenges for fashion and luxury brands

Protecting fashion: a rounded IP strategy

Bereskin & Parr LLP

Canada presents options for those seeking to protect and enforce rights in luxury brands, including effective mechanisms and alternatives for strategic defence and enforcement. read more
China’s fashion and luxury brand challenge: trademark squatting and parallel imports

Kangxin Partners PC

Regionality is a well-known characteristic of trademark protection and brings particular jurisdictional challenges for fashion and luxury brands. In China, these challenges include trademark squatting and parallel imports. read more
India promises market potential but challenges remain for luxury brands

RNA, Technology and IP Attorneys

While luxury brands are increasingly entering the Indian market, proving India’s potential as a destination for luxury products, they face some formidable challenges, including high import duties, lack of quality retail space and the ever-present threat of counterfeiting. read more
Legal fakes and the shopping experience – Italy’s fashion challenges

Bugnion SpA

Some so-called ‘legal fakes’ in Italy have so successfully fooled consumers and won over luxury and fashion brand fans that they have essentially supplanted the original brands, which are yet to conquer the country. read more
Symbols of the rich and famous: challenges for fashion and luxury brands

Uhthoff, Gómez Vega & Uhthoff

Innovation, notoriety, protective registration and counterfeiting are key challenges for fashion and luxury brands. Fortunately, Mexico has a complex system of enforcement in place. read more
Russia’s fight against fakes, imitations and replicas

Gorodissky & Partners

Anti-counterfeiting measures will never succeed in removing all counterfeits from the market, but they do make it significantly more difficult for counterfeiters to produce and sell fakes. read more
Criminal complications – Turkey’s counterfeiting challenge

ATG Law Firm

Turkey is a tourist hot spot – but as the visitor numbers escalate, so too do the fake products. A good brand protection strategy can help to reduce the visibility of counterfeit products riding on the coattails of a trademark. read more
Everything old is new again? Protecting traditional fashion designs as non-traditional marks

Birch Stewart Kolasch & Birch LLP

A pending US district court case on a fashion company’s efforts to protect a handbag design as a non-traditional trademark under US law – even though variations of the design have long been in the public domain – should provide much-needed clarity on this area. read more