World Trademark Review Issue 61

June/July 2016

The trademark resources rollercoaster

While corporate trademark counsel continue to struggle with budget cuts and freezes, their counterparts in private practice are reporting increased workloads, revenues and positivity. Although this may at first seem counterintuitive, it stems from the symbiotic relationship between the two

Features

Aiming for fame in Mexico

Mexico
In 2005 amendments to the Mexican Industrial Property Law designed a procedure for declaring the well-known character of a mark. A recent judicial precedent contributes to the understanding of how these amendments have been interpreted

How to establish an international corporate licensing programme

A well-functioning international licensing programme can help a brand to expand into new categories and territories, adapting to new trends and a changing marketplace. However, setting up such a programme takes hard work and ongoing care

A fresh slant for 2016

United States of America
A number of important decisions were handed down in 2015. A key theme for the year – and one that is yet to be resolved – was the constitutional debate regarding the Section 2(a) ban on disparaging trademarks

Website blocking and anti-counterfeiting – new weapon or flash in the pan?

Originally developed to target internet service providers hosting websites with pirated content, website blocking orders have occasionally been applied to websites selling counterfeit goods. Could they be a powerful new weapon for brand owners?

Navigating the parody defence in US trademark law

United States of America
The question of what constitutes an appropriate target for ridicule is, by nature, subjective. However, imitating a trademark for the purposes of humour or commentary may cross the line into an abridgement of proprietary rights

The trademark resources rollercoaster

While corporate trademark counsel continue to struggle with budget cuts and freezes, their counterparts in private practice are reporting increased workloads, revenues and positivity. Although this may at first seem counterintuitive, it stems from the symbiotic relationship between the two

WTR Industry Awards 2016: the shortlist revealed

The WTR Industry Awards 2016 – to be presented at an exclusive ceremony at the Hilton Orlando Bonnet Creek, timed to coincide with the 138th International Trademark Association annual meeting – honour leading trademark teams and individuals across a range of sectors. We reveal the shortlist

The evolution of African trademark case law

South Africa
Zambia
South Africa
Over the past year there has been a regular stream of cases in Africa – with the number of decisions set to increase in the coming years

Preliminary injunctions: a comparative global overview

United Kingdom
Japan
China
Hong Kong
Netherlands
United Arab Emirates
Vietnam
Italy
Russian Federation
Spain
Germany
United States of America
Preliminary injunctions can be a valuable tool for rights holders, but they are not always straightforward to obtain. Lawyers from Hogan Lovells provide a comparative global overview of strategies for obtaining them in different jurisdictions

Turning to the unusual

Singapore
A number of novel cases on less commonly litigated issues of trademark law were decided in Singapore in 2015

Moncler breaks new ground with Rmb3 million statutory damages award

China
A fashion company has secured a landmark victory along with significant damages from the Beijing IP Court. The win breaks new ground in China and shows that courts are not afraid to apply the new Trademark Law

From bad faith to parody: a busy year for Australia’s courts

Australia
From caravans, cars and fashion magazines to whiskey, wine and tobacco, 2015 was a year of diverse trademark cases in Australia, including key decisions from the Federal Court and the Australian Trademarks Office

How exposed is your trademark portfolio in China?

China
A long-term enforcement strategy is a must for rights holders doing business in China. Without one, they can find themselves overspending or underspending, or overwhelmed by requests for instructions or simply the sheer magnitude of actions in China

India’s changing times

India
Recent decisions and developments illustrate how the Indian legal regime is exploring unchartered territory as it seeks to accommodate the interests of domestic and international rights holders

Hot Chocolate and Simply Red: some hits (and misses) from European case law

European Union
From struggles over shape and colour marks to parodies and biscuit battles, the European courts wrestled with a diverse range of important trademark cases in 2015

The China licensing lowdown

China
China’s licensing landscape has evolved at breakneck speed in the past few years. Brand owners should keep on top of the latest developments to help them get the best deal they can and keep their trademark rights secure

From interlocutory injunctions to Donald Trump: trademarks to the fore in Canadian courts

Canada
As the country awaits sweeping amendments to the Trademarks Act, the courts were kept busy with decisions covering relief against non-parties, metatags, cancellation proceedings and the exemption for recognised trademarks under the Charter of the French Language in Quebec Province

Coming into focus: new gTLD benchmarks for brands

While many issues remain unsettled in the new gTLD programme, after two years of the first round there are valuable lessons that brand owners can learn and apply going forward

Building a resilient brand integrity programme

World trends are driving global brand protection and brand integrity needs, but purely legal remedies are often insufficient. Instead, an integrated approach that utilises the right balance of legal elements, coupled with modern brand protection technology, is key

Personal name and signature trademarks: Brazilian courts set the tone

Brazil
Two of the most emblematic cases on the interplay between personality rights and trademark rights were decided in 2015

Columns

Federal Court of Appeal rules on geographic names as trademarks

Canada
A recent Federal Court of Appeal decision illustrates the inherent difficulty in registering a trademark which is descriptive, either of goods or services, or of a geographical location where the goods or services originated

Protecting trademarks in post-sanctions Iran

Iran, Islamic Republic of
As Iran emerges from a long spell of international sanctions, international brands are considering expanding into the country. However, an understanding of local nuances is critical to successful market entry

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

Country Correspondent

United States: Coloured judgment: non-traditional trademarks in the fashion industry

United States of America
Lewis Roca Rothgerber Christie LLP
Non-traditional trademarks are usually more expensive to register and enforce, but they can also result in valuable protection for fashion wares

Romania: An open approach to registration

Romania
Vilau I Associates
Reflecting the current trend towards the use of less conventional signs, the Romanian Patent and Trademark Office is open to the registration of non-traditional marks – with certain caveats

European Union: What future after the EU reforms?

European Union
Locke Lord
As a result of the EU trademark reforms, the number and importance of non-traditional trademarks could increase in the future

India: A shift in protection of non-traditional trademarks

India
Ranjan Narula and Rachna Bakhru
Slowly but steadily, the legislature and judiciary are recognising the significance of non-traditional marks

Turkey: Extended protection for non-traditional trademarks

Turkey
Turkey affords substantial protection to 3D, colour, motion and sound marks, but has a long way to go to grant comprehensive protection to taste, smell and texture marks

United Kingdom: Shaping up a strategy

United Kingdom
Marks & Clerk
Brand owners will have to work harder and smarter to enable consumers to recognise non-traditional types of mark as possessing distinctive character

Mexico: The need for change

Mexico
Uhthoff, Gómez Vega & Uhthoff SC
The potential obligations arising out of international law may become a great opportunity to tackle the underdevelopment of non-traditional trademarks

China: Colour me safe

China
Kangxin Partners PC
Colour marks are a powerful tool for brand owners, but require careful handling

Italy: Registration is just one possibility

Italy
Bugnion SpA
While it is relatively easy to obtain a registration for a non-traditional trademark in Italy, the examination of validity is then left to the enforcing judges

Canada: Preparing for change

Canada
Bereskin & Parr LLP
The effects that the amendments to the Trademarks Act in Bill C-31 have on rights holders will be wide ranging, but the expanded definition of ‘trademark’ should prove to be a boon

Roundtable

Navigating a complex advertising environment

Denmark
China
Russian Federation
Sweden
Practitioners from China, Denmark, Russia, Sweden and the United States discuss the trademark issues involved in advertising – both online and in the physical world