World Trademark Review Issue 55

June/July 2015

Better together

While trademark counsel seem to be benefiting from closer relationships with marketing, significant challenges remain – not least managing an increasingly complex digital workload within renewed budgetary constraints

Features

Better together

While trademark counsel seem to be benefiting from closer relationships with marketing, significant challenges remain – not least managing an increasingly complex digital workload within renewed budgetary constraints

Due diligence for acquiring trademark portfolios

China
A record number of high-profile trademark acquisitions are being reported in India. Wherever the acquisition is located, interested parties should conduct full due diligence to avoid wasting these valuable assets

A new model for trademark operations

Trademark departments are needing to transform themselves driven by complexity, global risk, cost pressures and human capital requirements. A new model allows for significant cost savings, while being flexible enough to meet each client’s needs

US Supreme Court renews interest in the Lanham Act

In 2014 two Supreme Court opinions decided who can bring a claim for false advertising. However, it was also an important year for the First Amendment in trademark cases

The ECJ takes a multi-dimensional view of trademarks

2014 could be termed ‘the year of the three-dimensional mark’ in Europe, with the European Court of Justice issuing a high proportion of decisions related to such marks

African courts flex their muscles

Whether tackling issues surrounding AdWords or shape marks, recent decisions serve as a reminder that Africa should not be overlooked as a source of articulate and progressive reasoning on legal trademark development

Preventing early termination of Russian registered marks

Russian courts are increasingly dealing with claims for the early termination of registered marks due to non-use

Protection for well-known marks in Myanmar

Hopes are high that the long-awaited Trademark Act may finally come into force in Myanmar this year. Until then, foreign rights holders looking to do business there have various options for protecting their marks

Distinctiveness enjoys enhanced importance under new legislation

The scrutiny of both inherent distinctiveness and actual evidence of ability to distinguish in the marketplace will increase once amendments to the Trademarks Act come into force

Demystifying the concepts of trademark exclusivity and validity

Decisions in 2014 have contributed to the ongoing debate as to whether the exclusivity and validity conferred by a trademark registration is a myth or reality

Combating pre-emption in China

Trademark pre-emption in China has been a concern for many, but developments in 2014 suggest that rights holders have good reason to be optimistic

A year of firsts in Singapore

2014 saw a series of unprecedented decisions which have practical implications for brand owners

Lessons from the Australian courts

The first Trademarks Office decisions concerning the new extension of time provisions introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 were just one notable development in 2014

A new round in the conflict between private and public rights

The question of what happens when a trademark is used in the name of a blog or site as a part of the opinion delivered through the content has been addressed by the Federal Court of Appeal on Civil and Commercial Matters

WTR 1000 – turning from the silver to gold tier

The WTR 1000, released in January 2015, comprehensively identifies the world’s leading trademark firms and practitioners. Here we profile those firms which have risen from the silver to gold tier

Ruling beyond legality: a new approach to interpreting the IP law?

An analysis of recent cases reveals that new grounds, which go beyond a strict civil law perspective, have been introduced into the court’s decision-making process

Keep your friends close – how to stay partners in co-ownership

While co-owned patents are not uncommon, it is unusual to find trademarks being jointly registered by more than one user. Are businesses missing a trick and how can co-owners ensure that they remain on good terms?

The second coming of US whole business securitisation

Whole business securitisation is growing in popularity and offers an innovative way for strong brands to segregate valuable intellectual property and other intangible assets from the parent company’s operating risks, and thus effectuate cheaper debt financing

WTR Industry Awards 2015

The WTR Industry Awards 2015 – to be presented at an exclusive ceremony at the San Diego Natural History Museum, timed to coincide with the 137th International Trademark Association annual meeting – honour leading trademark teams and individuals across a range of sectors. We reveal the shortlist

Columns

Top IP pitfalls and how to avoid them

While Ukrainian IP law may appear familiar, foreign companies should check the finer details in order to avoid the most common mistakes that rights holders make when entering the Ukrainian market

Perspectives

Trademark-related quotes, opinions and observations from around the globe

Protecting your celebrity when image rights are insufficient

Taylor Swift, Katy Perry and Rihanna are leading the charge in finding innovative ways to use intellectual property, and trademark rights in particular, to compensate for the lack of an image right within the United Kingdom and Europe

Country Correspondent

United Kingdom: Courts and OHIM stay ahead of the curve

United Kingdom
Birgit Clark and Ben Hitchens
Locke Lord Assessing the latest developments in keyword advertising and the enforcement of unregistered rights online

Mexico: A portrait of protection

Mexico
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

Romania: Staying one step ahead

Romania
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

India: Protecting brands in a virtual world

India
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

Italy: Opportunity and risk in the online environment

Italy
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

Going deeper into the dark net

United States of America
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

China: A challenge on the rise

China
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

Canada: Keeping in line when using marks online

Canada
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

Roundtable

Best practice in trademark litigation

Trademark practitioners from around the world offer practical guidance on litigation best practice in their jurisdictions