World Trademark Review Issue 59

February/March 2016

Tools at the ready

Based on feedback from key figures across the trademark community, World Trademark Review presents some of the most useful online tools that can be used by counsel to streamline daily workflows

Features

New procedural rules in Brazil and their impact on IP litigation

Brazil
A new Civil Procedure Code – due to come into force in March – should finally tackle Brazil’s crippling judicial backlog, which affects all legal proceedings, including trademark and related matters. However, there remains fierce opposition to the code

Trademark litigation: a data-centric approach

United States of America
From examining the likelihood of winning on summary judgment to knowing when an injunction is likely to issue, a data-centric approach is a valuable supplement to traditional legal research and the wisdom of personal experience

Why selective distribution makes sense for luxury and premium businesses

While selective distribution can be an excellent option for luxury brand owners, allowing them to control how their products are sold within a certain territory, there are potential clashes with competition law, particularly within the European Union

Acquiring or selling trademarks: the not-so-simple truth

Proper due diligence on the part of both seller and purchaser is crucial when it comes to any acquisition. While sometimes costly, good housekeeping is essential for effective brand management and enforcement

Talking point: 2015 industry developments and a look at the year ahead

Trademark professionals and IP association representatives from around the world highlight some of the most significant issues of 2015 and what to watch out for in 2016

The nuts and bolts of trademark consent and coexistence agreements

While coexistence and consent agreements can be useful tools for protecting trademarks and avoiding litigation, parties entering into them must draft them with great care and be mindful of the potential pitfalls

Significant developments at the USPTO in 2015

Important changes in 2015 for trademarks at the US Patent and Trademark Office include a large filing increase, trademark fee reductions, the launch of courtesy email reminders for post-registration deadlines and the release of a new ID manual

US government remains hard to read over trademarks

United States of America
Some recent high-profile cases highlight that the final say on whether a trademark will be granted or refused still rests with the government. However, it is not always possible to predict which way things will go

Best practice in trademark management

On October 29 2015 World Trademark Review hosted a conference on Managing the Trademark Asset Lifecycle in New York. The corporate profile of trademarks, brand valuations and potential new revenue streams for law firms were just a few of the issues discussed

Tools at the ready

Based on feedback from key figures across the trademark community, World Trademark Review presents some of the most useful online tools that can be used by counsel to streamline daily workflows

What the phish is going on?

Phishing is a fact of life in the online world and a growing concern for brand owners, given that many phishers impersonate well-known brands and trademarks in order to gain the trust of their targets

Own name defence: a global perspective

Mexico
United Kingdom
Indonesia
Japan
China
Hong Kong
Turkey
Australia
Taiwan, Province of China
Russian Federation
Germany
Brazil
Singapore
In many countries people or even companies have a defence to trademark infringement when using their own names. In this article Baker & McKenzie’s global IP team outlines where an own name defence exists and whether this extends to company names

Advertising thrives in India’s legal jungle

India
While various laws govern advertising in India – including ads that can be said to be misleading or even to constitute an unfair trade practice – as well as an impressive body of case law, the sector can be bewildering for new entrants

Pay to play – why the USPTO is steering applicants away from federal district court

United States of America
While recent cost-cutting initiatives may be behind the US Patent and Trademark Office actively steering ex parte appeals of dissatisfied applicants away from federal district court, where does this leave those who are still pursuing a registration?

Luxury brands adapt to a new China

China
China’s luxury goods market is slowing as a result of anti-corruption measures and shifting consumer preferences. But what do these changing dynamics mean for brand strategies and enforcement trends?

Columns

When pharmaceutical branding meets IP and health law

A distinctive trademark can be key to a product’s success. Yet while distinctiveness and trademarks are concepts that should not be separated, unfortunately this still happens all too frequently

Trademarking hashtags and emojis

Hashtags and emojis – both popular ways to express ideas and emotions – are everywhere. Unsurprisingly, businesses are looking to get in on the act by using and registering them as trademarks, but they do not always find the process to be straightforward or risk free

Perspectives

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

Trademark Intelligence

Trademark docketing in a brave new world

A growing number of organisations have begun developing innovative approaches – particularly with regard to trademark docketing. By taking an open-minded and holistic approach, trademark practices can improve how data is received, managed and used

Country Correspondent

China: The path towards enforcement in China

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

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

United States of America
Lewis Roca Rothgerber Christie LLP
The recent Supreme Court decision in B&B Hardware, Inc v Hargis Industries, Inc has a number of implications for brand owners

Romania: Tackling infringement in Romania

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

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

United Kingdom
Marks & Clerk Solicitors
If a case is framed appropriately, the Intellectual Property Enterprise Court can offer an efficient procedure for pursuing infringers

Turkey: A pragmatic approach to tackling counterfeiting

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

India: Managing at macro and micro level

India
RNA Intellectual Property Attorneys
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

Canada: Surveying the online enforcement landscape

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

Italy: Italian protection for geographical indications

Italy
Bugnion SpA
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?

Mexico
Uhthoff, Gómez Vega & Uhthoff
While preliminary measures are available to rights holders, Article 199bis(1) defeats their goal and contravenes the principles of IP rights protection