World Trademark Review Issue 70

December 2017/January 2018

Search for the secret formula: measuring ROI for brand protection

In a KPI-driven corporate environment, return on investment is a central preoccupation. Yet this remains challenging to measure – particularly when it comes to brand protection

Trevor Little

Features

Protecting the looks of products in China

China
Infringers are getting smarter in China – they no longer copy trademarks directly but target a product’s look. So how can rights holders best protect unique packaging, creative shapes or innovative designs in the world’s biggest market?

Four years on – how Mexico stepped up to Madrid

Mexico
It is now four years since Mexico officially ascended to the Madrid Protocol. We examine how local practitioners have been adapting to this new trademark ecosystem and see what common issues are arising

Crafting the perfect cease and desist letter

Drafting a letter demanding that an infringer cease its illegal activities is a standard task for many trademark practitioners. But each one needs to be carefully structured in order to achieve its objective – done well, a good cease and desist can actually lead to significant goodwill

A new dawn for Kenya

Kenya
The trademark landscape in Kenya is set to shift dramatically with proposed changes to the law. We examine some of the key developments and the issues that brand owners need to be aware of in order to protect their marks effectively in the east African nation

Brand valuation face-off – debating the merits of ranking tables

A passionate debate has erupted over the publication of brand valuation ranking tables. We brought two of the most high-profile parties together to state their cases and gave each an opportunity to respond. The result is thought provoking and, unsurprisingly, heated

Uncertain road ahead for quality signs in Germany

Germany
The ECJ has clarified that individual marks must be used as indicators of origin in order for their use to qualify as genuine. The decision throws up several issues related to quality signs, most notably in Germany, where certification marks are not recognised

Changing tides at ICANN

Amazon’s recent successful independent review panel decision with regard to the ‘.amazon’ gTLD could have a significant effect on ICANN governance

Motives for a mark

In a groundbreaking piece of research, academics in the Netherlands have studied exactly why applicants file for trademarks. The results reveal a clear difference between the motives of so-called ‘innovators’ and ‘non-innovators’

Tackling grey market goods in Brazil

Brazil
Brazil has no legal definition of ‘parallel imports’, despite this being an issue that blights many international brands. However, rights holders can take measures to combat this practice in the Brazilian marketplace

Search for the secret formula: measuring ROI for brand protection

In a KPI-driven corporate environment, return on investment is a central preoccupation. Yet this remains challenging to measure – particularly when it comes to brand protection

How to make sure promoted posts follow the rules

For corporate counsel, sponsored marketing posts are becoming an increasingly complicated issue. We look at how to comply effectively with UK and US practice codes to avoid any legal or PR headaches down the road

No magic cure – why product authentication will not stop Chinese counterfeiters

Several technology companies are promising to eradicate counterfeits from the Chinese marketplace as part of their marketing push. However, rights holders should be wary of trusting that product authentication will make a major dent in the battle against fakes in China

Columns

Brexit: European Commission sets out its position on intellectual property

With the first three rounds of negotiations complete, the European Commission has published its position paper on intellectual property. The content provides possible answers to some of the key questions surrounding EU trademarks post-February 2019

What I have learned: private practice versus in-house

Timely advice for both in-house and private practice lawyers, from someone who has been successful in both spheres

Artificial intelligence: A meeting of minds

Advances in technology have been transforming the workflow of trademark practitioners over several years. We take a look at how the rise of artificial intelligence will change the status quo even more

Perspectives

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

Country Correspondent

India: Food and beverage products in the branding crosshairs

India
RNA Intellectual Property Attorneys
As the Indian food and beverage market becomes increasingly alluring to to brand owners, the courts are witnessing an eruption in trade dress protection and advertising disputes

Mexico: Make your product pop – but make sure it is well protected

Mexico
Uhthoff, Gómez Vega & Uhthoff
Products need innovative strategies to stand out on shop shelves, especially in the food and beverage sector. While such marketing can increase sales, it also risks compromising trademark protection

Russia: Shifting tides of protection in the food and beverage sector

Russian Federation
Gorodissky & Partners
Although trade dress is an essential tool for brand owners trying to boost consumer recognition in the food and beverage sector, enforcing trademark protection can be a thorny issue

Canada: Changing the recipe: the amended Trademarks Act

Canada
Bereskin & Parr LLP
Amid a string of changes to the Trademarks Act, food and beverage brand owners should be aware of the potential impact that this new legislation will have on their trademark rights in Canada.

Germany: Uphill battle for protection of 3D confectionery marks

Germany
Meissner Bolte
The confectionery industry is awash with three-dimensional trademarks. However, EU case law demonstrates that brand owners face considerable difficulties registering and protecting their marks

China: Fake food: curbing food and beverage counterfeits in China

China
Kangxin Partners PC
With the rise of fake food in China and increasing levels of concern from the government and consumers, brand owners should act quickly to protect their IP rights from the fallout of counterfeiting.

Italy: Salumi shows how innovative packaging can be crucial for food and beverage sector

Italy
Bugnion SpA
Rights holders’ innovative use of design demonstrates that in the modern market, food packaging is a vital advertising tool which is also eligible for IP rights protection