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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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WTR 78

April/May 2019

Jurisdictional challenges for financial and professional services brands

All in the name: 101 ways to avoid having a weak mark

Bugnion SpA

Until recently, Italian banks traditionally had highly descriptive names but fell victim to the inherent weakness of those names as trademarks. Banks are now seeking more distinctive names to improve their image and strengthen their brand. read more
Challenge, reform and opportunity for Mexican business – a legal perspective

Uhthoff, Gómez Vega & Uhthoff SC

Mexico’s unique business position makes it an attractive investment location. While this brings challenges, it also signals opportunity with the reform of the Industrial Property Law. read more
Financial brand protection: it is about the money

Kangxin Partners

Financial companies must balance what is distinctive and recognisable in a brand with what is descriptive and easy to understand. Moreover, defensive registrations can provide greater protection against brand damage. read more
Protect and enforce IP rights or risk wasting brand investment

Gorodissky & Partners

Brand registration alone is insufficient. Financial and professional services need to take a realistic view of the unauthorised use of brands and ensure that their trademarks are not diluted and abused. read more
The digital revolution and the future of India’s financial service brands

RNA, Technology and IP Attorneys

India's banks operate in one of the world's most active fintech markets. As fraudsters try to take advantage, financial companies must be ready to stop brand infringement. read more

WTR 77

February/March 2019

Top trademark challenges

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
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
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
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
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
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

WTR 76

December 2018/January 2019

Enforcement and litigation

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
Enforcement in Italy: legal peculiarities and effectiveness of IP protection

Bugnion SpA

There are advantages to protecting IP rights in Italy, including the possibility of starting legal action before registration has been granted in one of the 22 specialised courts across the country. 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
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
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
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

WTR 75

October/November 2018

Fluid trademarks (including slogans)

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
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
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
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
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
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
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