World Trademark Review Issue 60

April/May 2016

The world’s most valuable brands in 2016

While some sceptics still question the point of brand valuations – given that different valuers arrive at significantly different amounts – understanding the methodologies used demonstrates that brand value is a crucial indicator of overall corporate value, now more than ever

Features

Preliminary injunctions – the end of the matter or just the beginning?

While preliminary injunctions are meant to act as an emergency measure to preserve the status quo until a full trial, there are good reasons why many signal not only the start, but also the end of a trademark case

Establishing bona fide use in the Middle East and Africa

Qatar
United Arab Emirates
Syria
Kuwait
Lebanon
Egypt
The bona fide use requirement in the Middle East and Africa differs significantly from that in the United States. We examine the different evidence that may be considered when challenging an applicant’s use in administrative or court proceedings

Misunderstandings, mistakes, mistrust: trademark (mis)reporting in the media

Skewed coverage of trademarks in the mainstream media is translating into public confusion at best and heightened hostility towards intellectual property at worst. We investigate the extent of the problem and consider what stakeholders can do to redress the balance

Psychology and decisions in IP trials

Most legal disputes involving intellectual property hinge on some degree of subjective human evaluation. Consequently, understanding the underlying principles of psychology and their application can be a powerful advantage

Follow the money – chasing international counterfeiters through the US legal system

United States of America
US trademark law contains robust remedies for brand owners looking to bring offshore infringers to justice. Although the process requires diligence, it is possible to use it to identify counterfeiters and even freeze and ultimately recover funds held in foreign accounts

The world’s most valuable brands in 2016

While some sceptics still question the point of brand valuations – given that different valuers arrive at significantly different amounts – understanding the methodologies used demonstrates that brand value is a crucial indicator of overall corporate value, now more than ever

Federal Circuit finds disparaging marks registrable – analysis and reaction

In its reversal of a refusal to register THE SLANTS, the Federal Circuit has found unconstitutional the prohibition on disparaging marks. World Trademark Review compares reactions from corporate counsel, private practitioners and the applicant himself

Trademark patterns of the top R&D-driven innovators

The trademark patterns of R&D-driven innovators confirm the role of trademarks as a key intangible asset in the corporate strategies of innovative firms

To sub-license or not to sub-license – a not-so simple question

While sub-licensing can generate additional revenue, increase name recognition and streamline manufacturing processes, a licensor should use the licence agreement to help carefully structure the rights and obligations of the parties to any future sub-licence agreements

Europe’s brave new trademark regime and how it will affect rights holders

European Union
The EU trademark law reform process was finally concluded at the end of 2015, with many of the changes that will affect Community trademarks due to come into force on March 23 2016. But what will the new regime mean for rights holders?

Border protection in Latin America – the future looks brighter

Uruguay
Chile
Colombia
Panama
Brazil
Despite the region’s reputation as a haven for counterfeiters, several Latin American countries are making significant strides in developing and using highly effective anti-counterfeiting tools

A year of experimentation in China’s new IP courts

China
Specialised IP courts in Beijing, Shanghai and Guangzhou have been in session for over a year. They have already embarked on some of the boldest experiments in China’s recent judicial history

The evolution of IP practice from an in-house perspective

In-house legal teams of all sizes seek external providers which offer value, flexibility, competence and reliability. Service providers must offer individual, customised programmes not only to be responsive, but also to provide an unsurpassed level of personalised service

Columns

Commercial courts could signal bright new dawn for trademark disputes

India
The government in India has finally given the green light to special courts for adjudicating commercial disputes, including IP disputes. While the new courts will charge higher fees, they should make it possible for cases to be heard much more swiftly

Justifying the law on unjustified threats

United Kingdom
The Law Commission has published a bill that would reform the law on unjustified threats with regard to IP rights. In particular, it would extend current legal exceptions which have been carved out for patents to trademarks and designs

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

Country Correspondent

China: The myth of evidence in Chinese trademark cases

China
Gloria Q Wu
The issue of sufficiency of evidence in trademark cases in China poses a number of issues for brand owners

United States: Busy enough for you?

United States of America
Flavia Campbell
In the United States, practitioners must navigate a range of challenges, starting with uncertainty over standards for obtaining injunctions

Italy: Clearing the field of weak marks

Italy
Nicola Tarantini
With trademark registrations valid for 10 years and many existing marks on the register, it can be challenging to find and register an original trademark

United Kingdom: Navigating the social media environment

United Kingdom
Matthew Sammon and Vicky Butterworth
The increase in different media channels continues to present difficulties in clearing marks for use and steering a business on brand selection

Canada: The challenging world of Canadian official marks

Canada
Bereskin & Parr
Rights holders could find that using simple greeting terms may offend the rights of official mark holders

Turkey: Combating trademark squatting

Turkey
Yasemin Kenaroglu
In Turkey, the bad-faith registration of well-known trademarks by third parties is a common problem

European Union: Preparing for changes in EU trademark law

European Union
Ben Hitchens and Birgit Clark
A challenge for trademark counsel in Europe is preparing for the upcoming trademark reform package

India: A billion people and the challenges in reaching them

India
Ranjan Narula and Rajiv Suri
With a population of over 1 billion, India offers a billion opportunities to brand owners looking to invest. However, there are a number of unique hurdles to overcome