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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 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

Issue 73

June/July 2018

Trademark licensing and ownership issues

The rise of licensing in India

RNA, Technology and IP Attorneys

Advancements in technology and expanding marketplaces have been key to successful licensing programmes in India over recent years. Local trademark owners and licensees should now follow in the footsteps of international brands and adopt licensing as a core revenue stream. read more
Know your rights: grounds for ownership and opposition under a Mexican trademark licence

Uhthoff, Gómez Vega & Uhthoff

Mexican law follows international standards with regard to trademark licensing, and licensors can benefit from a licensee’s use of their mark even where the agreement has not been recorded. However, the local rules governing ownership in these circumstances are less clear. read more
Licensing in Italy: how to prove a non-written agreement

Bugnion SpA

Trademark licensing is recognised under Italian law despite the absence of specific legislation governing agreements. When it comes to enforcement, licensees can provide evidence of a non-written agreement through various means. read more
Case law as a guide to trademark ownership, licensing and enforcement

Birch Stewart Kolasch & Birch LLP

Under common law, ownership is conferred through first use of a trademark – including use by a licensee. Recent case law can help to determine which party has the right to enforce the licensed mark where an infringement suit arises. read more
Key tips for trademark licensing in China

Kangxin Partners

Before signing a trademark licence agreement, rights holders should ensure that they have a strong risk-prevention strategy in place, in order to benefit as either a licensor or a licensee. read more
Turkish licensees’ obligation to use

ATG Law Firm

Rights holders can significantly benefit from a proficient licensing agreement, provided that both parties uphold their end of the bargain. Depending on the type of agreement, licensees must fulfil various obligations before they can reap the rewards of a well-established trademark. read more
Know your exploitation rights: how to make and enforce a Russian trademark licence

Gorodissky & Partners

Foreign brand owners are free to enter into direct or indirect trademark licensing agreements in Russia. However, in order to be valid and enforceable, these agreements must contain key terms and be recorded with the Federal Service for Intellectual Property. read more
Trademark licensing in Canada: control is key

Bereskin & Parr LLP

The upcoming amendments to the Trademarks Act may bring short-term uncertainty over ownership and licensing issues. One thing that is unlikely to change is the established principle of proving a licensor’s control over a mark. read more

Issue 72

April/May 2018

Trademark registration and prosecution strategies

All thought and no action is a losing combination in China

Kangxin Partners PC

Having a thorough knowledge of the trademark filing system is key to obtaining IP protection, but knowing what to register is only the first step to ensure that the process runs smoothly. read more
Choosing the right protection strategy for Russia

Gorodissky & Partners

Prosecution strategies are dictated by the circumstances of the rights holder’s business. Nevertheless, a smart choice of trademark and thorough registration are key to protecting IP rights. read more
To play or not to play (the waiting game) in Canada?

Bereskin & Parr LLP

With the new Canadian trademark regime on the horizon, rights holders should consider whether to wait or to implement a filing strategy before the present system becomes a thing of the past. read more
The importance of correctly identifying goods and services in the United States

Birch Stewart Kolasch & Birch LLP

Trademark rights are acquired through use of a mark in commerce. Applicants must correctly identify the goods and services with which their mark is intended for registration or risk refusal or cancellation. read more
Turkey welcomes letters of consent

ATG Law Firm

Pursuant to the new Industrial Property Law, similar or identical trademarks will no longer be considered absolute grounds for refusal if applicants submit a letter of consent for use from the prior owner. read more
Why local counsel is key to a strong filing strategy in Mexico

Uhthoff, Gómez Vega & Uhthoff

Rights holders seeking trademark protection, whether on a national or international basis, should consult local counsel in order to formulate a filing strategy that holds up to Mexican customs and practice. read more
Top tips for trademark registration in India

RNA, Technology and IP Attorneys

India: The Trademarks Registry has implemented various changes to enhance the trademark filing system in India. An efficient registration strategy should help rights holders to reap the benefits of these updates. read more
Navigating the idiosyncrasies of the Italian filing system

Bugnion SpA

The Italian Patent and Trademark Office has made significant steps towards improvement over the past 10 years. However, foreign rights holders should be aware of the system’s various quirks. read more

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