Our Country Correspondents, leading firms from countries across the globe, take a detailed look at
specific topics affecting trademark owners.
Canada: The importance of registration
Bereskin & Parr LLP
While rights in trademarks and other commercial signs can exist irrespective of registration, registration has many important advantages
China: Unregistered rights in a first to file environment
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
India: Reacting to the new interconnected world
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
Italy: When the non-registered mark is the packaging
It is important that companies consider the treatment of packaging as trademarks and designs
Mexico: When use is not enough
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
Romania: Changing with the times
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
United Kingdom: The perils and powers of passing off
Passing off can be a useful supplement to registered trademark protection, although the evidential requirements can increase uncertainty and costs
United States: Strong rights without registration
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
Vietnam: Approaches to trade dress
Bross & Partners
While trade dress is not per se registrable, certain aspects are protectable under certain circumstances
Canada: A problem on the rise
With the explosive growth of internet-based services, misappropriation of identity or personality cases may become even more common in Canada
China: Choosing the right weapon
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
India: Reacting to a celebrity-obsessed culture
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
Italy: A strong stance on protection
The Italian legal system grants strong protection to publicity and image rights, and exceptions to such rights must be strictly interpreted
Mexico: A question of identity
Anyone in Mexico has the right to choose whether to be publicly known
Middle East: Taking a flexible approach in Qatar
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
Poland: A busy year for the courts
Several interesting judgments regarding the use of images in Poland were handed down in 2014
Romania: A fundamental right
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
United Kingdom: An imperfect image
In the United Kingdom, there is no codified body of law which explicitly protects image or publicity rights
United States: To tweet or not to tweet?
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
Canada: Opening the door to broader trade dress protection
The effects on brand owners of the amendments to the Trademarks Act in Bill C-31 will be wide ranging and varied, but the expanded definition of ‘trademark’ should prove a boon.
China: A strict approach to protection
Only trade dress which is distinctive, non-functional and associated with a well-known commodity can be protected under the Unfair Competition Law.
India: It’s how you look that matters
The importance of trade dress has been reinforced by judicial precedents which have made clear that products are purchased by reference not just to brand names, but also to their overall presentation.
Italy: A new ‘time to market’ approach
The fast-fashion model allows products to be launched on the market in less than one month. Italy’s design protection system plays an important role in this regard.
Mexico: Getting creative in protection
Rights holders may obtain the strongest protection for their trade dress by combining the applicable existing legal forms of intellectual property according to the particular needs of the product.
Poland: Overlapping protection
In Poland, rights holders can draw on a range of legal protection for the overall appearance of or impression created by products.
Canada: Navigating the Canadian domain name landscape
Non-Canadian entities operating in or planning to enter the Canadian market would be well advised to consider acquiring a ‘.ca’ domain name sooner rather than later.
China: The electronic trademark
The view that domain names effectively function as ‘electronic trademarks’ is becoming increasingly prevalent, but in some respects infringement of domains can be more harmful.
India: Taking a balanced approach
Faced with the new gTLD roll-out, a number of strategies are available to rights holders in both existing and new top-level domains.
Italy: One way or another
Multiple avenues are available to rights holders to protect their brands online.
Mexico: Strategies beyond registration
For those who have fallen victim to cybersquatting, there are options available to recover the desired domain name.
Middle East: ‘.شبكة’ (‘.shabaka’) – a new gTLD in Arabic
Strategies for brand owners in anticipation of the new Arab language top-level domain '.شبكة' (‘.shabaka’).
Poland: The case for specialised arbitration
Arbitration proceedings can be an attractive way of resolving domain name disputes.
United Kingdom: Now is the time for review
The online domain expansion raises a number of issues for UK rights holders.
United States: A strategy in five easy pieces
A number of key decisions need to be taken when developing an action plan for policing marks in the new gTLD space.