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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WTR 74

August/September 2018

Jurisdictional challenges for fashion and luxury brands

WTR 73

June/July 2018

Trademark licensing and ownership issues

  • 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

  • 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

  • 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

  • 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

  • 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

  • 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

WTR 72

April/May 2018

Trademark registration and prosecution strategies

WTR 71

February/March 2018

Internet issues (other than domain names)