World Trademark Review Issue 68

August/September 2017

USPTO heads into uncharted waters

While trademark applications at the US Patent and Trademark Office continue to rise, a new administration and the unexpected resignation of Director Michelle Lee have raised questions as to how its future looks

Tim Lince

Features

Asia-Pacific Team of the Year: Burberry Asia

Vehicles & Transport Team of the Year: BMW

Travel & Leisure Team of the Year: Marriott International

The social perspective

The global user base of social networks continues to grow, and so too does the need for robust IP enforcement online. We asked leading platforms to advise on how brand owners can get the most out of their IP rights tools

The growing world of ‘.brands’

Five years on from the introduction of new generic top-level domains, more and more ‘.brands’ are going live, giving potential applicants the opportunity to assess their current deployment

Notorious markets: where to police

Indonesia
China
South Africa
Thailand
South Africa
India
In the second of a two-part series, we profile markets which were omitted from the Office of the US Trade Representative’s Notorious Markets List, but which brand owners should have on their radars. This issue, we turn our attention to Asia and Africa

Europe, Middle East and Africa Team of the Year: Specsavers

North America Team of the Year: World Wrestling Entertainment

United States of America

Healthcare & Life Sciences Team of the Year: Novartis Pharma

Food, Beverages & Tobacco Team of the Year: PepsiCo

Financial & Professional Services Team of the Year: American International Group

Fashion, Cosmetics & Luxury Goods Team of the Year: Maus Frères

Sports, Entertainment & Media Team of the Year: Nike

In-house Counsel of the Year: J Scott Evans, Adobe Systems

Preparing for change: counting down to Canada’s trademark amendments

Canada
Amendments to the Trademarks Act will likely come into force in 2019. Brand owners should prepare and improve their strategies for protection, trademark acquisition and enforcement in opposition venues

Software & Online Services Team of the Year: Twitter

Trademark licensing: a best practice guide

While licensing offers a range of benefits to brand owners, there are numerous pitfalls to avoid. From partner selection to terminations, licensors must take care to ensure that their extensions are win-wins rather than costly missteps

The risks of personal branding

Recent changes to EU trademark law have made it easier to take action against infringing trade names. But how should companies approach situations in which the alleged infringer is an individual trading under his or her own name?

Latin America Team of the Year: Sky International

Global discovery: an international comparison

United Kingdom
France
United States of America
Disclosure is often one of the first steps in any IP dispute, yet the rules across different jurisdictions can be confusing, as a comparison of the regimes in England and Wales, France and the United States demonstrates

Lifetime Achievement Award: Anne Gundelfinger

USPTO heads into uncharted waters

While trademark applications at the US Patent and Trademark Office continue to rise, a new administration and the unexpected resignation of Director Michelle Lee have raised questions as to how its future looks

Internet & Telecommunications Team of the Year: Intel

Household & Consumer Goods Team of the Year: Inter IKEA Holding Services

Not-for-Profit Organisation Team of the Year: The National Association of Realtors

Technology & Consumer Electronics Team of the Year: Western Digital

WTR Industry Awards 2017

On May 23 2017 World Trademark Review announced the winners of the 11th WTR Industry Awards at an exclusive ceremony at the Museum of Contemporary Arts in Barcelona. The awards are designed to recognise the vital work carried out by in-house trademark counsel and identify the teams and individuals that are performing their functions to the highest possible standards. In the following articles we speak to the winners and explain why they were judged to be the leading examples of industry best practice.

Cutting through coexistence agreements in China

Coexistence agreements can be a more palatable solution to disputes than litigation. However, while China’s Trademark Law allows coexistence under certain circumstances, there are risks of which all parties should bear in mind

Columns

Varsity Brands opens the door to increased litigation

In Varsity Brands v Star Athletica the US Supreme Court both provided answers and raised more questions surrounding design-related copyright

The rise of trademark trolls

Much has been written about the rise of so-called ‘patent trolls’, but a similar phenomenon arguably exists in the trademark world. For brand professionals, the key to counteracting this threat is careful strategising from the outset

Perspectives

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

Country Correspondent

Canada: The cult of personality (rights)

Canada
Bereskin & Parr LLP
In the social media age, protection for personality rights can be found in Canadian trademark law under the torts of misappropriation of personality and passing off, and privacy statutes

China: How Michael Jordan transformed publicity rights in China

China
Kangxin Partners PC
Much progress has been made in recent years when it comes to protecting name and image rights, and to fighting against bad-faith registrations in China

Italy: Italy’s robust image rights regime

Italy
Bugnion SpA
Italian law establishes a robust and far-sighted legal regime for the protection of image rights – which are viewed as an aspect of privacy and thus a fundamental human right

Russia: Russia provides up-to-date protection for image rights

Russian Federation
Gorodissky & Partners
Image rights are designed to protect a person’s appearance and ensure privacy. Although they are similar to IP rights, they are in fact regulated by different rules

India: It’s all in the name

India
RNA Intellectual Property Attorneys
Modern technology raises a number of issues surrounding celebrities’ online publicity rights. Without relevant legislation, jurisprudence has evolved through various court decisions

United States: Copyright is a different ball game when it comes to athletes’ photos

United States of America
Birch Stewart Kolasch & Birch LLP
The appeal court opinion in Maloney v T3 Media highlights the limitations on publicity rights when claims are pre-empted under the US Copyright Act

Germany: Case-by-case approach to image rights

Germany
Meissner Bolte
In Germany, admissibility of the publication of images rests on the facts of the case. Recent Federal Court of Justice case law could offer guidance on the extent of the right to control one’s own image

Mexico: Constitution provides solid basis for image rights regime

Mexico
Uhthoff, Gómez Vega & Uhthoff SC
Publicity and image rights in Mexico are protected through different legal statutes, all based on the constitutional rights to privacy, freedom of speech and expression

Roundtable

Pharmaceutical brands in the Americas: practical strategies for a fast-moving sector

Venezuela
Canada
United States of America
Experts from Canada, the United States and Venezuela discuss cutting-edge strategies for the creation, protection and exploitation of brands in the pharmaceutical industry