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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 62

August/September 2016

Pharmaceutical trademarks

Canada: Will new trademark regime raise the bar?

Bereskin & Parr LLP

The new Trademarks Act’s registration requirements and provisions on distinctive marks look set to have a significant impact on how pharmaceutical companies manage their trademark strategies
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China: Trademark registration: a secret weapon

Kangxin Partners PC

Unlike patents, registered trademarks benefit from 10 years of protection and unlimited renewals, making them a valuable tool when it comes to safeguarding pharmaceutical products
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European Union: Investment and safety within the European Union

Locke Lord

Although costly, R&D in the healthcare sector is rewarded with patents. But it is also wise to invest time and money in developing a strong, recognisable brand in the pharmaceutical industry
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India: A strict approach for a growing industry

RNA Intellectual Property Attorneys

Indian courts are adopting a stricter approach to pharmaceutical trademarks – not only to highlight that confusion between medicinal products can be fatal, but also to encourage brand owners to invest in India’s growing pharmaceutical industry
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Italy: Is change afoot in Italy?

Bugnion SpA

Recent opposition case law appears to indicate a change in the approach to the relevant public in relation to pharmaceutical products – but the reasons behind this new trend are not yet clear
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Mexico: No specific legislation, but stricter prosecution criteria are applied

Uhthoff, Gómez Vega & Uhthoff SC

As confusion over pharmaceutical marks could affect public health as well as patient safety, a stricter examination process is applied to these marks
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Turkey: Pharmaceutical trademarks: regulation, parallel imports and advertising

Kenaroğlu Intellectual Property

Before use on the market, a pharmaceutical trademark must undergo examination by two different authorities – a system designed to protect both public safety and existing IP rights
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United Kingdom: English High Court considers parallel imports

Marks & Clerk Solicitors

The High Court has held that pharmaceutical product Epanutin must be rebranded in order to gain access to the market. The decision provides a useful review of UK law on the parallel import of pharmaceutical products
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United States: A prescription for clarity

Lewis Roca Rothgerber Christie LLP

Rights holders must find a way to resolve the apparent conflict between the strict likelihood of confusion test applied to pharmaceutical marks and findings that consumers are likely to exercise greater care when looking at health-related goods
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WTR 61

June/July 2016

Non-traditional trademarks

Canada: Preparing for change

Bereskin & Parr LLP

The effects that the amendments to the Trademarks Act in Bill C-31 have on rights holders will be wide ranging, but the expanded definition of ‘trademark’ should prove to be a boon
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China: Colour me safe

Kangxin Partners PC

Colour marks are a powerful tool for brand owners, but require careful handling
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European Union: What future after the EU reforms?

Locke Lord

As a result of the EU trademark reforms, the number and importance of non-traditional trademarks could increase in the future
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Italy: Registration is just one possibility

Bugnion SpA

While it is relatively easy to obtain a registration for a non-traditional trademark in Italy, the examination of validity is then left to the enforcing judges
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Mexico: The need for change

Uhthoff, Gómez Vega & Uhthoff SC

The potential obligations arising out of international law may become a great opportunity to tackle the underdevelopment of non-traditional trademarks
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Romania: An open approach to registration

Vilau I Associates

Reflecting the current trend towards the use of less conventional signs, the Romanian Patent and Trademark Office is open to the registration of non-traditional marks – with certain caveats
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United Kingdom: Shaping up a strategy

Marks & Clerk

Brand owners will have to work harder and smarter to enable consumers to recognise non-traditional types of mark as possessing distinctive character
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United States: Coloured judgment: non-traditional trademarks in the fashion industry

Lewis Roca Rothgerber Christie LLP

Non-traditional trademarks are usually more expensive to register and enforce, but they can also result in valuable protection for fashion wares
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India: A shift in protection of non-traditional trademarks

Ranjan Narula and Rachna Bakhru

Slowly but steadily, the legislature and judiciary are recognising the significance of non-traditional marks read more
Turkey: Extended protection for non-traditional trademarks

Turkey affords substantial protection to 3D, colour, motion and sound marks, but has a long way to go to grant comprehensive protection to taste, smell and texture marks read more

WTR 60

April/May 2016

The top trademark challenges

Canada: The challenging world of Canadian official marks

Bereskin & Parr

Rights holders could find that using simple greeting terms may offend the rights of official mark holders
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China: The myth of evidence in Chinese trademark cases

Gloria Q Wu

The issue of sufficiency of evidence in trademark cases in China poses a number of issues for brand owners read more
European Union: Preparing for changes in EU trademark law

Ben Hitchens and Birgit Clark

A challenge for trademark counsel in Europe is preparing for the upcoming trademark reform package read more
India: A billion people and the challenges in reaching them

Ranjan Narula and Rajiv Suri

With a population of over 1 billion, India offers a billion opportunities to brand owners looking to invest. However, there are a number of unique hurdles to overcome read more
Italy: Clearing the field of weak marks

Nicola Tarantini

With trademark registrations valid for 10 years and many existing marks on the register, it can be challenging to find and register an original trademark read more
Turkey: Combating trademark squatting

Yasemin Kenaroglu

In Turkey, the bad-faith registration of well-known trademarks by third parties is a common problem read more
United Kingdom: Navigating the social media environment

Matthew Sammon and Vicky Butterworth

The increase in different media channels continues to present difficulties in clearing marks for use and steering a business on brand selection read more
United States: Busy enough for you?

Flavia Campbell

In the United States, practitioners must navigate a range of challenges, starting with uncertainty over standards for obtaining injunctions read more

WTR 59

February/March 2016

Enforcement and litigation

Canada: Surveying the online enforcement landscape

Bereskin & Parr LLP

Two recent decisions show Canadian courts grappling with trademark concepts such as ‘use’ and ‘confusion’ in the online context
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China: The path towards enforcement in China

Kangxin Partners PC

There are many options for enforcing your trademark rights in China, but it is critical to develop a smart strategy
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India: Managing at macro and micro level

RNA Intellectual Property Attorneys

As India removes policy barriers to make it easier to do business, rights holders need to adapt strategies to take advantage of the changes occurring at macro and micro levels
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Italy: Italian protection for geographical indications

Bugnion SpA

Protection for geographical indications and designations of origin is highly effective in Italy, especially when it comes to collective trademarks
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Mexico: Does Mexico’s IP Law undermine its own preliminary measures?

Uhthoff, Gómez Vega & Uhthoff

While preliminary measures are available to rights holders, Article 199<em class="Alright-italic">bis</em>(1) defeats their goal and contravenes the principles of IP rights protection
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Romania: Tackling infringement in Romania

Vilau I Associates

Trademark rights can be enforced through administrative or judicial proceedings in Romania, providing rights holders with flexibility
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Turkey: A pragmatic approach to tackling counterfeiting

Kenaroğlu Intellectual Property

Despite a comprehensive legal regime, rights holders still face difficulties when it comes to combating counterfeiting in Turkey
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United Kingdom: Litigating trademark cases in the Intellectual Property Enterprise Court

Marks & Clerk Solicitors

If a case is framed appropriately, the Intellectual Property Enterprise Court can offer an efficient procedure for pursuing infringers
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United States: The preclusive effect of Trademark Trial and Appeal Board decisions

Lewis Roca Rothgerber Christie LLP

The recent Supreme Court decision in <em class="Alright-italic">B&B Hardware, Inc v Hargis Industries, Inc</em> has a number of implications for brand owners
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