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World Trademark Review Issue 66

April/May 2017

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Google (and China) rising, while Apple takes a fall

There has been a shake-up at the top of the Brand Finance annual Global 500 report, with Google knocking Apple from its perch after five years at the top. But it is Chinese brands which saw the most growth in 2016

David Haigh

Features

How much is enough? How to avoid over-licensing

As brand extension through licensing becomes increasingly popular, the phenomenon of over-licensing has emerged as a potential threat to brand health and longevity
Allan Feldman

The Year of Qiaodan

To welcome in the Year of the Rooster, we take a look back at the biggest Chinese trademark case of the last 12 months – and ask whether it could turn out to be one of the most important rulings for brand owners in the country’s history
Jack Ellis

Google (and China) rising, while Apple takes a fall

There has been a shake-up at the top of the Brand Finance annual Global 500 report, with Google knocking Apple from its perch after five years at the top. But it is Chinese brands which saw the most growth in 2016
David Haigh

Registries transformed – the world’s most innovative IP offices revealed

As IP offices across the world adapt and improve the services they offer, World Trademark Review identifies those leading the way with non-core tools and services – and those falling behind
Tim Lince

Social media revolution? Legal uncertainty and the case for global harmonisation

Trademark dilution on social media has been on the rise for several years. Now the International Social Media Association hopes to find a way to remove legal uncertainty and ease the pressure on rights holders

India on the move

The Indian Trademark Registry has stepped up its digital efforts in the last year, while changes to the legislative regime demonstrate growing recognition for international brand owners

Building for the future

The chief executive of the IP Office of Singapore – which is renowned for its ground-breaking approach to trademark services – offers his vision of how its counterparts around the world can transform themselves into innovation agencies
Daren Tang

Strategic takeaways on brand protection in China

On December 7 2016 high-level brand protection professionals, investigators, industry specialists and enforcement officials gathered in Shanghai for World Trademark Review’s Brand Protection Greater China summit
Trevor Little

A new dawn at the TTAB

Extensive rule changes have now come into effect at the Trademark Trial and Appeal Board which promise greater efficiency and clarity in proceedings. However, brand owners and IP counsel need to be well versed in the changes to get the most out of them
Laura Popp-Rosenberg

The marketplace perspective

There has been persistent criticism of the rights protection mechanisms offered by online marketplaces, with brand owners calling for better anti-counterfeiting tools. Leading e-commerce platforms offer advice on how best to utilise the current arsenal

Message to success? Tough new battleground opens up in counterfeiting war

Messaging apps have overtaken social networks in total user numbers and many are now embedding payment methods on their platforms, creating yet another challenge for brand owners
Daniel Bennett

USPTO audits go mainstream: prepare for the unexpected

The US Patent and Trademark Office is tightening controls on the post-registration requirement of use in an effort to clean up the US Trademark Register – meaning that rights holders now face random audits of their registered marks

All change in the Caribbean

Across the Caribbean, the trademark landscape is transforming. Recent legislative revisions have helped to modernise trademark law in two important jurisdictions and there is much to encourage international brand owners
Sophie Davies

News

Global View

Over one-fifth of 2015 cases at Beijing IP Court involved foreign parties, reveals study

USPTO reveals record level of trademark applications

Alibaba marketplace Taobao reappears on Notorious Markets List

Industry moves and mergers

New UK IP minister appointed

eBay launches authentication programme

“Historic declaration” to tackle counterfeits signed by brand owners and shipping firms

Columns

Anonymous: Dispatches from the front line

Donning the cloak of anonymity, in-house practitioners share candid insights about what is happening on the front line. In this opening column, our anonymous author considers how corporate counsel should deal with rogue marketing colleagues

Trademark enforcement in Iran: opportunities and hurdles

While brand owners’ interest in Iran has increased since international sanctions were lifted in 2015, there has also been a corresponding spike in IP challenges

Perspectives

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

Country Correspondent

Mexico: Expansion of domains in Mexico

Mexico
Uhthoff, Gómez Vega & Uhthoff
Managing domain names involves maximising business opportunities while protecting against infringement. A clear internal domain name policy can help to reconcile these aims
Eryck Castillo and Jimena Chi Barrales

Germany: Fight for your (domain name) rights

Germany
Meissner Bolte
As more and more companies use the Internet to sell goods and services, it is crucial to register the right domain name and then to protect it effectively
Andreas Kabisch

Russia: Resolving domain name disputes and doing business online in Russia

Russian Federation
Gorodissky & Partners
A well-balanced internal domain name policy is vital. Those doing business in Russia should consider national domain requirements, as well as national domain litigation practice
Sergey Medvedev and Sergey Vasiliev

Canada: Dotting the ‘.com’ and crossing the ‘.sucks’: how to manage your domain name portfolio

Canada
Bereskin & Parr LLP
Domain name strategy and portfolio management should be a key component of a brand’s overall IP strategy. A mindful, measured and disciplined approach is crucial
Catherine Lovrics and Sharyn Costin

China: Managing domain names and enforcing your rights in China

China
Kangxin Partners PC
China now has a comprehensive system in place for resolving disputes between rights holders and domain name holders in cases where these conflict
Samiko Sun

Italy: Alternative dispute resolution proceedings involving ‘.it’ domain names in 2016

Italy
Bugnion SpA
There are now over 3 million ‘.it’ domain names, making it vital that disputes be resolved swiftly and cost effectively. A review of cases decided last year provides a snapshot of case law in this area
Paolo Di Mella

India: Should domain names receive the same protection as trademarks?

India
RNA Intellectual Property Attorneys
There is still some dispute in India as to whether domain names should be protected in the same way as trademarks – particularly when it comes to common descriptive words and family names
Rachna Bakhru

United States: Could Trump rewind the transfer of the IANA function?

United States of America
Birch Stewart Kolasch & Birch LLP
Donald Trump was a vocal critic of the transfer of internet governance functions to ICANN in September 2016. What action is he likely to take now that he is president?
Robert J Kenney

Roundtable

Brand creation and protection: a multifaceted approach

Practitioners from China, Germany and the United States discuss how to manage the brand lifecycle, exploring how counsel can ensure robust, innovative and effective creation and protection strategies
Cynthia Walden, Catherine Stockell, Justin Jiang, Christian Thomas, Johnson Li and Kristen McCallion
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