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Country Correspondent

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 71

February/March 2018

Internet issues (other than domain names)

China: Unfair competition online

Kangxin Partners PC

Online operators that use technical means to influence user choice or damage competing network products will be found in violation of the new Anti-unfair Competition Law. read more
United States: Case law shines a light on internet evidence at motion to dismiss stage

Birch Stewart Kolasch & Birch LLP

Assessing the relevance of internet evidence can be a daunting task for rights holders. However, if submitted accurately at the earliest stages, such evidence may sway infringement proceedings read more
Italy: Do we need a vaccine against influencers?

Bugnion SpA

The popular practice of online personalities endorsing products for economic benefit has finally permeated the legal sphere – brand owners should be prepared to pull the plug on misleading ads read more
Mexico: Cat and mouse: how rights holders chase online infringers

Uhthoff, Gómez Vega & Uhthoff

The anonymity offered by the Internet is a significant lure for infringers. However, despite the online landscape being largely ungoverned, Mexican rights holders can still take steps to protect their intellectual property read more
Canada: Online business expansion may still result in restricted trademark rights

Bereskin & Parr LLP

Canadian courts have demonstrated a shift in the interpretation of use of a trademark. Brand owners should consider how they engage online with consumers in order to maintain protection. read more
Turkey: Search engines yield mixed results on liability

ATG Law Firm

Search engines offer wide-reaching advertising opportunities, but the law is patchy on where liability for use of metatags and keywords falls in a trademark infringement suit. read more
India: Indian courts respond to thriving online market

RNA, Technology and IP Attorneys

With a growing incentive for traders to migrate to online retail marketplaces, Indian courts face a new set of challenges from disputes involving e-commerce read more

Issue 70

December 2017/January 2018

Trademarks in the food and beverage industry

India: Food and beverage products in the branding crosshairs

RNA Intellectual Property Attorneys

As the Indian food and beverage market becomes increasingly alluring to brand owners, the courts are witnessing an eruption in trade dress protection and advertising disputes. read more
Mexico: Make your product pop – but make sure it is well protected

Uhthoff, Gómez Vega & Uhthoff

Products need innovative strategies to stand out on shop shelves, especially in the food and beverage sector. While such marketing can increase sales, it also risks compromising trademark protection read more
Russia: Shifting tides of protection in the food and beverage sector

Gorodissky & Partners

Although trade dress is an essential tool for brand owners trying to boost consumer recognition in the food and beverage sector, enforcing trademark protection can be a thorny issue read more
Canada: Changing the recipe: the amended Trademarks Act

Bereskin & Parr LLP

Amid a string of changes to the Trademarks Act, food and beverage brand owners should be aware of the potential impact that this new legislation will have on their trademark rights in Canada. read more
Germany: Uphill battle for protection of 3D confectionery marks

Meissner Bolte

The confectionery industry is awash with three-dimensional trademarks. However, EU case law demonstrates that brand owners face considerable difficulties registering and protecting their marks read more
China: Fake food: curbing food and beverage counterfeits in China

Kangxin Partners PC

With the rise of fake food in China and increasing levels of concern from the government and consumers, brand owners should act quickly to protect their IP rights from the fallout of counterfeiting. read more
Italy: Salumi shows how innovative packaging can be crucial for food and beverage sector

Bugnion SpA

Rights holders’ innovative use of design demonstrates that in the modern market, food packaging is a vital advertising tool which is also eligible for IP rights protection. read more

Issue 69

October/November 2017

Protecting unregistered trademarks and other commercial signs

Germany: Protection for apps remains problematic

Meissner Bolte

Protection for unregistered marks still varies according to the sector. The Federal Supreme Court’s wetter.de decision demonstrates that requirements for distinctiveness are higher for mobile applications than other titles of works read more
Russia: Utilising the full range of protection

Gorodissky & Partners

Rights holders considering entering the Russian market should be aware that, in addition to trademarks and industrial designs, a range of IP tools is available to enhance rights protection read more
Mexico: The challenges of a first-to-file regime

Uhthoff, Gómez Vega & Uhthoff SC

While protection for unregistered marks is available, there is no substitution for registration. However, where marketing strategies result in a rights holder going into business without a registration, certain legal rights allow the mark owner to continue using its mark read more
Italy: Grapes of wrath: coexistence of unregistered marks in the wine industry

Bugnion SpA

Juggling the coexistence of registered and unregistered trademark rights on Italian family names in the wine industry is a centuries-old practice which the courts appear uninterested in changing read more
United States: Protecting unregistered trademarks under common law and unfair competition

Birch Stewart Kolasch & Birch LLP

Unregistered trademarks and commercial signs can be protected under common law rights and unfair competition claims. However, practical issues must be considered when applying such protection read more
India: Courts step up to protect unregistered trademarks and trade dress

RNA Intellectual Property Attorneys

While rights holders face numerous issues when it comes to protecting unregistered trademarks with no direct or substantial sales in India, the courts have started to take a more liberal approach read more
Canada: Unregistered does not mean unprotected

Bereskin & Parr LLP

Unregistered trademarks have the potential to block registration and affect the exclusivity of registered marks in Canada. Clearance searches of unregistered marks are therefore crucial before rights holders enter the marketplace read more

Issue 68

August/September 2017

Publicity and image rights

Canada: The cult of personality (rights)

Bereskin & Parr LLP

In the social media age, protection for personality rights can be found in Canadian trademark law under the torts of misappropriation of personality and passing off, and privacy statutes read more
China: How Michael Jordan transformed publicity rights in China

Kangxin Partners PC

Much progress has been made in recent years when it comes to protecting name and image rights, and to fighting against bad-faith registrations in China read more
Italy: Italy’s robust image rights regime

Bugnion SpA

Italian law establishes a robust and far-sighted legal regime for the protection of image rights – which are viewed as an aspect of privacy and thus a fundamental human right read more
Russia: Russia provides up-to-date protection for image rights

Gorodissky & Partners

Image rights are designed to protect a person’s appearance and ensure privacy. Although they are similar to IP rights, they are in fact regulated by different rules read more
India: It’s all in the name

RNA Intellectual Property Attorneys

Modern technology raises a number of issues surrounding celebrities’ online publicity rights. Without relevant legislation, jurisprudence has evolved through various court decisions read more
United States: Copyright is a different ball game when it comes to athletes’ photos

Birch Stewart Kolasch & Birch LLP

The appeal court opinion in Maloney v T3 Media highlights the limitations on publicity rights when claims are pre-empted under the US Copyright Act read more
Germany: Case-by-case approach to image rights

Meissner Bolte

In Germany, admissibility of the publication of images rests on the facts of the case. Recent Federal Court of Justice case law could offer guidance on the extent of the right to control one’s own image read more
Mexico: Constitution provides solid basis for image rights regime

Uhthoff, Gómez Vega & Uhthoff SC

Publicity and image rights in Mexico are protected through different legal statutes, all based on the constitutional rights to privacy, freedom of speech and expression read more