Country correspondent

Canada: Surveying the online enforcement landscape

Two recent decisions show Canadian courts grappling with trademark concepts such as ‘use’ and ‘confusion’ in the online context

China: The path towards enforcement in China

There are many options for enforcing your trademark rights in China, but it is critical to develop a smart strategy

India: Managing at macro and micro level

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

Italy: Italian protection for geographical indications

Protection for geographical indications and designations of origin is highly effective in Italy, especially when it comes to collective trademarks

Mexico: Does Mexico’s IP Law undermine its own preliminary measures?

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

Romania: Tackling infringement in Romania

Trademark rights can be enforced through administrative or judicial proceedings in Romania, providing rights holders with flexibility

Turkey: A pragmatic approach to tackling counterfeiting

Despite a comprehensive legal regime, rights holders still face difficulties when it comes to combating counterfeiting in Turkey

United Kingdom: Litigating trademark cases in the Intellectual Property Enterprise Court

If a case is framed appropriately, the Intellectual Property Enterprise Court can offer an efficient procedure for pursuing infringers

United States: The preclusive effect of Trademark Trial and Appeal Board decisions

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

Canada: Fluid marketing under the new trademark regime

Consideration should be given to the protection of slogans and fluid marks in view of the changes expected to Canada’s trademark law

China: The need for close collaboration

Successful use of fluid marks calls for close collaboration between creative trademark lawyers and marketing teams

India: Retaining freshness with fluid marks and slogans

Robust protections exist for fluid marks in India, but there are also a number of challenges to consider

Italy: It’s a family thing – protecting a series of trademarks in Italy

There are a number of measures that rights holders should take in order to establish evidence of use for a set of trademarks which constitute a family

Mexico: Flexible, to a degree

Rights holders must always bear in mind the importance of incorporating core elements of the registered mark within the fluid version

United Kingdom: Dos and don’ts of fluid marketing

Fluid trademarks can be an attractive means of engaging with consumers, but there are some basic rules that must be followed

United States: Keeping it fluid in the United States

Fluid trademarks are a good strategy to capture the attention of millennials, but certain steps should be taken

Canada: The latest take on Canadian trademark ownership issues

Bereskin & Parr LLP

Amendments to Canada’s Trademarks Act are set to directly affect licensing strategies

China: Maximising owner potential

Kangxin Partners PCTrademark licensing in China continues to increase in scope and frequency, but certain considerations must be examined to ensure brand integrity

India: Opportunities abound in pro-liberalisation regime

RNA Intellectual Property AttorneysFor a multinational corporation, there may be a number of reasons to license its trademarks in an emerging economy such as India

Italy: The benefits of an adjustable regime

Bugnion SpAAccording to Italian law, licensing agreements may be revised to meet any of the parties’ special requirements and consequently trademarks can be fully exploited

Mexico: Gaining a subtle advantage

Uhthoff, Gomez Vega & UhthoffRights holders need to take care over licensing agreements in order to achieve increased sales revenues

Romania: How to avoid the antitrust traps

Vilau I AssociatesRomanian competition law prohibits anti-competitive agreements and practices and the abuse of dominant market positions

United Kingdom: Exploit your rights

Locke LordA robust licensing regime can significantly boost a company’s turnover

United States: Can someone use your marks in ads without permission?

Davis Wright TremaineUse of third-party marks without consent in advertising or expressive works that might be viewed as advertising always carries some element of risk

Canada: Preparing for change

Businesses would be well advised to consider their registration strategies before changes to the Trademarks Act under Bill C-31 are implemented

China: Creating the right strategy

Kangxin Partners PC

A number of strategies can be used to obtain trademark registrations in China smoothly and with a broad scope of protection

India: Prosecution tips for India  

India is providing a better atmosphere and infrastructure for trademark prosecution, even though it faces significant challenges in this area

Italy: Creating coexistence in Italy

In Italy, there is still much debate as to the nature, scope and validity of coexistence agreements

Mexico: Registration in a fast-moving world

Strategies and considerations to bear in mind when filing for trademark protection in Mexico

Romania: Best practice for Romanian filings

Romania is a first to file jurisdiction and brand owners are advised to act quickly – and strategically – to secure their rights

United Kingdom: Does it matter if it’s black and white?

The issue of trademarks being registered in black and white and then used in colour has attracted much discussion in recent years – not least due to <em>Specsavers International Healthcare Ltd v Asda Stores Ltd</em>

United States: The importance of registration in a global economy

Companies which focus solely on domestic filings may suffer severe consequences if their marks are stolen in countries where products are manufactured or shipped