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World Trademark Review Issue 63

October/November 2016

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Takedown shake-ups: strengthening brand protection on online marketplaces

Frustration over the sale of counterfeits on digital marketplaces has reached a peak in recent months. We asked some of the world’s biggest brand owners what gold-standard protection mechanisms might improve the situation and examined how realistic their suggestions are

Tim Lince

Features

From OHIM to EUIPO: the journey so far

The first raft of changes to the EU trademark system are now in effect, having been implemented in March in exemplary fashion. The EU Intellectual Property Office’s next challenge is to repeat the trick for the remaining changes

Singapore seeks to turn trademarks into cash

Singapore
Asia-Pacific is leading the world when it comes to IP collateralisation. Singapore’s groundbreaking IP Financing Scheme recently saw the approval of its first patent-backed loan – and hopefully, lending against trademarks is not far behind

Holding companies: a brief primer from Alphabet to Z

Multiple issues are affected by the decision of where to hold a business’s IP assets. As such, analysis of the legal, tax and business considerations is merely the starting point
Michelle Mancino Marsh and Margaret Wheeler-Frothingham

Are you overpaying for trademark renewals?

Against a backdrop of inflated official and law firm fees, rights holders need to engage in benchmarking exercises to ensure they are not overpaying for renewals
Volker Spitz

Merchandising rights in China: judicial protection of commercial interests

China
Ground-breaking decisions have made merchandising rights a useful tool in the battle against bad-faith trademarks

Fee levels: why brand owners need to react fast in the Middle East and North Africa

Recent fee increases are just one area of change creating challenges for brand owners in the Middle East and Africa

Zombie trademarks – why resurrecting a dead brand can be fraught with uncertainty

United States of America
There have been a number of instances of defunct brands being reintroduced into the marketplace in recent months. However, current case law on the topic of residual goodwill is inconsistent at best and – whether original owner or resurrector – there is much to consider
Monica Riva Talley and Aisha Haley

Challenging but not hopeless: anti-counterfeiting in Africa

Counterfeiting is a serious problem in Africa. While laws are in place to tackle illicit trade, practical enforcement is often complicated by local capacity and attitudes

Takedown shake-ups: strengthening brand protection on online marketplaces

Frustration over the sale of counterfeits on digital marketplaces has reached a peak in recent months. We asked some of the world’s biggest brand owners what gold-standard protection mechanisms might improve the situation and examined how realistic their suggestions are
Tim Lince

Juggling act: assessing the evolution of EUIPO operations

European Union
The past year has been a busy one in Alicante. In addition to expanding its tools and activities, the EU Intellectual Property Office had to prepare for the changes ushered in by the European trademark reform package. In this year’s annual survey, we asked users to assess its performance during this period of change
Trevor Little

Is unofficial advertising around sports events playing by the rules?

The international rules on ambush marketing and promotional activities surrounding sports events present a complex maze for counsel to navigate
Mitchell H Stabbe

Weighing up your options

European Union
Trademark counsel from laws firms across 20 jurisdictions in Europe provide an overview of the performance of their countries’ EU trademark courts

News

Brand value in the boardroom with launch of new branding-backed financial indices

Alibaba aims to “streamline” takedown with launch of IP Joint Force System

“A welcome relief for brand owners fighting against counterfeiters”: court rules in ISP case

Industry moves and mergers

Mixed blessings for New Balance in China and United States

Victory for collaborating brands as court confirms liability of marketplace operators

Brexit vote creates uncertainty over future scope of trademark protection

Columns

Using the courts to tackle excessive delays at the Brazilian PTO

Brazil
The Brazilian courts have handed down a number of positive decisions for rights holders, mitigating the impact of lengthy delays at the Brazilian Patent and Trademark Office
Ana Paula Affonso Brito

Not just a voice: endorsements and accountability in India

India
To date, no liability has been attributed to brand ambassadors where the brands they endorse have failed to live up to expectations. However, that could be set to change

Perspectives

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

Where next for EU trademarks?

European Union
The impact of Brexit on trademarks is still unclear. Might brand owners be better served by a European system which maintains the principal features of the current system, but applies them to smaller groupings of territories?

Country Correspondent

China: Advertising, promotion and your brand: sometimes the best of intentions just won’t do

China
Kangxin Partners PC
While cease and desist letters work well for small, localised issues, where false advertising is rampant across China, other protective measures must be taken
Aaron D Hurvitz

Italy: The interplay between comparative advertising and unfair competition law

Italy
Bugnion SpA
While comparative advertising has a direct impact on competitors, misleading commercial communications may indirectly affect third parties’ products and image, resulting in a tort of unfair competition
Marco Lucchini and Simone Verducci Galletti

United Kingdom: Comparative advertising and enforcement in the United Kingdom

United Kingdom
Marks & Clerk
IP law balances protecting individuals and companies from unfair use of their endeavours with promoting healthy competition – and comparative advertising clearly demonstrates this balance
Mike Shaw and Dafydd Bevan

European Union: Staying within the boundaries

European Union
A robust legislative framework governs this controversial yet popular form of marketing in Europe, and a wealth of case law can be drawn on to determine whether comparative advertising is lawful
Paolo Cerroni and Charlie Clarence-Smith

Turkey: A new era for advertising

Turkey
Kenaroglu Law Firm
The first Turkish regulation allowing comparative advertising is due to come into force by the end of 2016. But what will it mean for rights holders?
Yasemin Kenaroglu and Soner Kenaroglu

Canada: Canada sees increase in class action lawsuits for misleading claims

Canada
Bereskin & Parr LLP
Several recent cases suggest that the most likely group to take action against misleading advertising may no longer be regulators or competitors, but disgruntled consumers acting as a class
Jennifer McKenzie and Catherine Lovrics

United States: How to use a third-party mark without infringing it

United States of America
Lewis Roca Rothgerber Christie LLP
Provided that you take care, it is quite possible to stay on the side of nominative fair use of a third-party mark, without straying into likelihood of confusion territory
Nathaniel Edwards and Thomas J Daly

India: Striking the right balance

India
RNA Intellectual Property Attorneys
Comparative advertising is allowed as long as the advertiser seeks to portray the advantages of its product in a truthful and honest manner. However, the courts have mixed views of puffery
Ranjan Narula and Mayur Varshney

Romania: When advertising campaigns border on the unacceptable

Romania
Vilau I Associates
Recent decisions, relating mainly to audiovisual advertising, reflect the regulators’ willingness to tackle misleading and comparative advertising
Dragos M Vilau

Mexico: Staying the right side of fair

Mexico
Uhthoff, Gómez Vega & Uhthoff
Most comparative and unfair advertising campaigns are designed to denigrate the quality or reputation of a competitor’s goods or services. Fortunately, remedies are available
Carolina Ponce
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