World Trademark Review Issue 56

August/September 2015

The right investigative approach

In Southeast Asia’s complex enforcement environment, several different models for trademark and counterfeiting investigations have evolved. For brand owners, choosing one is the first step in a challenging process

Features

Travel & Leisure Team of the Year: Expedia

World Trademark Review Industry Awards 2015

On May 5 2015, World Trademark Review announced the winners of its ninth Industry Awards at an exclusive ceremony at the San Diego Natural History Museum

In-house Counsel of the Year: Sophie Bodet, GlaxoSmithKline

Lifetime Achievement Award: Barbara Kolsun

Household & Consumer Goods Team of the Year: ZWILLING J A Henckels

Asia-Pacific Team of the Year: Alibaba

Trademark tacking and what it means for your brands

A US Supreme Court case has put tacking – protecting a later mark by asserting the priority date of an earlier similar mark – centre stage. Yet while the court clarified that tacking is a question of fact rather than law, it gave little guidance as to how this might affect trademark portfolios

Food, Beverages & Tobacco Team of the Year: PepsiCo

Fashion, Cosmetics & Luxury Goods Team of the Year: Kate Spade & Company

African storms: controversy delays new dawn of IP protection

The recent accession of 17 African countries to the Madrid Protocol has proved unexpectedly contentious and cast doubt on the enforceability of some international marks. We speak with the figures involved in the dispute and consider how brand owners can best protect their marks in the continent

Internet & Telecommunications Team of the Year: Google

Sports, Entertainment & Media Team of the Year: World Wrestling Entertainment

‘.brand’ new gTLDs – lessons learned and looking ahead to a second round

As the dust begins to settle on the first round of applications for new generic top-level domains (gTLDs), applicants are taking a long, hard look at what lessons can be learned – especially with regard to ‘.brand’ gTLDs and likely challenges in the second round

North America Team of the Year: Phillips 66

Inside INTA 2015: practical takeaways

World Trademark Review brings you the news and reviews from the key sessions at the International Trademark Association’s annual meeting

Software & Online Services Team of the Year: Twitter

Managing trademarks in the BEPS environment – the shifting tax landscape

The international tax regime for IP rights is shifting. Multinational companies should revisit their internal ownership and licensing structures to ensure that they meet guidance forthcoming from the Organisation for Economic Cooperation and Development

The right investigative approach

In Southeast Asia’s complex enforcement environment, several different models for trademark and counterfeiting investigations have evolved. For brand owners, choosing one is the first step in a challenging process

Financial & Professional Services Team of the Year: MasterCard

Advertising and infringement: a comparative global overview

Trademark experts from 12 jurisdictions outline the legal position on the use of third-party trademarks in advertising campaigns

Supreme Court holds that issue preclusion may apply to TTAB decisions

The Supreme Court has held that issue preclusion may apply to Trademark Trial and Appeal Board decisions. While the decision itself is relatively narrow, it could have a profound effect on how attorneys advise their clients

Not-for-Profit Organisation Team of the Year: Federation of the Swiss Watch Industry FH

Community position trademarks – an increasingly difficult position

Although position marks are accepted by the Office for Harmonisation in the Internal Market, they tend to be refused by the General Court and the European Court of Justice. What strategies can rights holders use to ensure that their signs depart from the norm or customs of the sector?

The view from the counterfeiting front line

Many brand owners regard counterfeiting as an irritant and one that is largely confined to fakes being sold in emerging economies. However, this eyewitness report gives some sense of the scale of the challenge facing brand owners around the world

Vehicles & Transport Team of the Year: BMW

Latin America Team of the Year: National Federation of Coffee Growers of Colombia

Technology & Consumer Electronics Team of the Year: Western Digital

Europe, Middle East & Africa Team of the Year: GlaxoSmithKline

Healthcare & Life Sciences Team of the Year: Eli Lilly and Company

Columns

Perspectives

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

UK Supreme Court rules on threshold for establishing goodwill

The UK Supreme Court has confirmed that the tort of passing off depends on having customers in the UK territory. However, it leaves uncertainty around the ability of some online businesses to protect their brand in the United Kingdom

Country Correspondent

Romania: Best practice for Romanian filings

Romania
Vilau I Associates
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?

United Kingdom
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

China: Creating the right strategy

China
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

Canada: Preparing for change

Canada
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

United States: The importance of registration in a global economy

United States of America
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

Italy: Creating coexistence in Italy

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

India: Prosecution tips for India  

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

Mexico: Registration in a fast-moving world

Mexico
Uhthoff, Gómez Vega & Uhthoff
Strategies and considerations to bear in mind when filing for trademark protection in Mexico

Trademark Intelligence

Trends in portfolio development and global filing strategies

Global filing strategies have undergone significant changes as companies become more sophisticated in their approaches to building strong intellectual asset portfolios