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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 56

August/September 2015

Trademark registration and prosecution strategies

Romania: Best practice for Romanian filings

Vilau I Associates

Romania is a first to file jurisdiction and brand owners are advised to act quickly – and strategically – to secure their rights read more
United Kingdom: Does it matter if it’s black and white?

Locke Lord

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 Specsavers International Healthcare Ltd v Asda Stores Ltd read more
China: Creating the right strategy

Gloria Q Wu and Samiko Sun

Kangxin Partners PC A number of strategies can be used to obtain trademark registrations in China smoothly and with a broad scope of protection read more
Canada: Preparing for change

Bereskin & Parr LLP

Businesses would be well advised to consider their registration strategies before changes to the Trademarks Act under Bill C-31 are implemented read more
United States: The importance of registration in a global economy

Davis Wright Tremaine

Companies which focus solely on domestic filings may suffer severe consequences if their marks are stolen in countries where products are manufactured or shipped read more
Italy: Creating coexistence in Italy

Bugnion SpA

In Italy, there is still much debate as to the nature, scope and validity of coexistence agreements read more
India: Prosecution tips for India

RNA Intellectual Property Attorneys

India is providing a better atmosphere and infrastructure for trademark prosecution, even though it faces significant challenges in this area read more
Mexico: Registration in a fast-moving world

Uhthoff, Gómez Vega & Uhthoff

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

Issue 55

June/July 2015

Internet use and misuse

United Kingdom: Courts and OHIM stay ahead of the curve

Birgit Clark and Ben Hitchens

Locke Lord Assessing the latest developments in keyword advertising and the enforcement of unregistered rights online read more
Mexico: A portrait of protection

Karla B Alatriste Martínez

Uhthoff, Gomez Vega & Uhthoff All artistic and literary works published on the Internet have the same protection as if they had been published in any other way read more
Romania: Staying one step ahead

Dragos M Vilau

VILAU | ASSOCIATES The sale of counterfeit goods is an important issue for brand owners, but the challenge is keeping pace with levels of infringement read more
India: Protecting brands in a virtual world

Ranjan Narula and Daleep Kumar

RNA Intellectual Property Attorneys With the rapid growth of e-commerce, it is important to have an in-depth understanding of the legal regime in order to identify the possible issues involved read more
Italy: Opportunity and risk in the online environment

Paolo Di Mella and Angela Di Blasio

Bugnion SpA Marketing efforts around Expo 2015 in Milan highlight both the opportunities and risks that online activities present read more
Going deeper into the dark net

Roxanne Elings and George P Wukoson

Davis Wright Tremaine There are no easy ways to identify counterfeiters on the dark web, but the good news is that the volume of counterfeiting is not as visible to ordinary consumers read more
China: A challenge on the rise

Celia Y Li and Alice Li

Kangxin Partners PC There has been a sharp rise in online IP disputes and it is recommended that these be filed on the basis of trademark infringement where possible read more
Canada: Keeping in line when using marks online

Sharyn Costin and Wynnie Chan

Bereskin & Parr Trademarks play a vital role in helping retail businesses to differentiate themselves from others, but proper use of marks is key read more

Issue 54

April/May 2015

Protection of unregistered trademarks and other commercial signs

Romania: Changing with the times

Dragos M Vilau

VILAU | ASSOCIATES The 2010 amendment to the Trademark Law extended protection to all unregistered marks so that rights holders can oppose the use and registration of their marks by third parties read more
India: Reacting to the new interconnected world

Ranjan Narula

RNA Intellectual Property Attorneys Indian courts have gone beyond the text of the statutes to protect the worldwide reputation that any trademark or commercial sign can acquire by virtue of its use, promotion or advertisement read more
Italy: When the non-registered mark is the packaging

Paola Stefanelli and Alessandro Mannini

Bugnion SpA It is important that companies consider the treatment of packaging as trademarks and designs read more
Canada: The importance of registration

Brigitte Chan and Tamara Céline Winegust

Bereskin & Parr LLP While rights in trademarks and other commercial signs can exist irrespective of registration, registration has many important advantages read more
Mexico: When use is not enough

Carolina Ponce

Uhthoff, Gomez Vega & Uhthoff While there are ways to protect unregistered distinctive signs in Mexico, rights holders would be well advised to ensure that the signs they use are registrable read more
United States: Strong rights without registration

Sheila Fox Morrison and Stacey Lee

Davis Wright Tremaine By collecting and producing evidence of use and marketplace awareness, a trademark owner can develop strong trademark rights in the United States without the need for federal registration read more
China: Unregistered rights in a first to file environment

Cynthia S Wang

Kangxin Partners PC While there are legal grounds for protecting unregistered trademarks and other commercial signs in opposition and invalidation actions in China, each case will require careful management read more
Vietnam: Approaches to trade dress

Le Quang Vinh

Bross & Partners While trade dress is not per se registrable, certain aspects are protectable under certain circumstances read more
United Kingdom: The perils and powers of passing off

Birgit Clark and Ben Hitchens

Locke Lord Passing off can be a useful supplement to registered trademark protection, although the evidential requirements can increase uncertainty and costs read more

Issue 53

February/March 2015

Publicity and image rights

United States: To tweet or not to tweet?

Davis Wright Tremaine

Companies should use social media to promote their products, services and brands. However, when those efforts include posting about celebrities in particular, the key is to proceed with caution read more
Poland: A busy year for the courts

Patpol

Several interesting judgments regarding the use of images in Poland were handed down in 2014 read more
Middle East: Taking a flexible approach in Qatar

Cedar White Bradley

As there is no specific legislation for the protection of image and publicity rights in Qatar, practitioners should take a adaptable approach when tackling the issue read more
Italy: A strong stance on protection

Bugnion SpA

The Italian legal system grants strong protection to publicity and image rights, and exceptions to such rights must be strictly interpreted read more
United Kingdom: An imperfect image

Edwards Wildman

In the United Kingdom, there is no codified body of law which explicitly protects image or publicity rights read more
India: Reacting to a celebrity-obsessed culture

RNA Intellectual Property Attorneys

With the phenomenal growth of the media, consumerism and celebrity endorsements, the protection of publicity and image rights requires greater attention and specific legislation in India read more
China: Choosing the right weapon

Kangxin Partners PC

Protection for publicity and image rights may be limited under the Trademark Law, but an application to register a personal name or portrait as a trademark is highly advisable read more
Canada: A problem on the rise

Jill Tonus and Tamara Céline Winegust

Bereskin & Parr LLP With the explosive growth of internet-based services, misappropriation of identity or personality cases may become even more common in Canada read more
Mexico: A question of identity

Uhthoff, Gómez Vega & Uhthoff

Anyone in Mexico has the right to choose whether to be publicly known read more
Romania: A fundamental right

VILAU | ASSOCIATES

Romania’s Constitution acknowledges protection for image rights only as a general and indirect principle, but legislation has significantly evolved in this area during the last 20 years read more