World Trademark Review Issue 71

February/March 2018

Blazing ahead: 25 developments set to shape the future of trademarks

As a new year begins, World Trademark Review looks ahead at some of the key changes and trends that could present both risks and opportunities to our industry

Trevor Little and Tim Lince

Features

Illegal streams: copyright challenges and how to beat them using trademark law

The streaming or retransmission of audiovisual content raises a number of complex legal issues for rights holders, who face a number of hurdles when it comes to taking action. Trademark law is just one enforcement option available

Creating a resilient enforcement strategy for Indonesia

Indonesia
Indonesia is a challenging jurisdiction in terms of enforcement endeavours, but a combination of different tactics will set brands up for success

Sun sets on local recognition for famous marks in China

China
The director of China’s State Administration for Industry and Commerce has confirmed that local appraisals for famous trademarks will end, making it vital that rights holders update their trademark protection strategies

Managing trademark assets

Last October World Trademark Review hosted Managing Trademark Assets in Chicago; crisis communications and the creative tactics needed to foster a cross-enterprise understanding of trademarks were just two of the strategic issues discussed

Big changes in the pharmaceutical sector as leading brands flourish

A deep dive into key data about the pharmaceuticals sector suggests that over-regulation and availability of skills and technology remain key challenges; while the leading brands continue to rise in value, most are still filing in single classes only

The enemy within: combating internal counterfeiting

The increasing risk coming from within organisations should not be underestimated. However, developing resilient policing and reporting strategies can help to counter these internal threats

The fame game: how reputation can protect unregistered marks in China

China
Recent decisions have highlighted the evolving approach to protection for unregistered trademarks in China. However, when seeking to prove reputation there are a number of factors to consider

Blazing ahead: 25 developments set to shape the future of trademarks

As a new year begins, World Trademark Review looks ahead at some of the key changes and trends that could present both risks and opportunities to our industry

An arm’s-length approach to trademark royalty rates

The transfer of intangible property may have a material effect on domestic taxes. While estimating trademark royalty rates for intercompany transfer pricing is fraught with difficulty, it can be helpful to adopt a systematic approach

Forum shopping just got easier – but beware potential traps

European Union
Recent case law signals a paradigm shift which might give parties seizing jurisdiction more flexibility. However, claimants should take account of factors beyond efficiency, cost and claimant-friendliness when selecting a forum

A new era at the USPTO – 2017 in review

United States of America
The last year has proved another significant one for the US Patent and Trademark Office’s trademarks organisation. Latest developments include fee changes for paper filers and a new declaration format

Inside track: Anheuser-Busch InBev

Following Anheuser-Busch InBev’s 2016 takeover of its nearest rival, World Trademark Review spoke to the revamped IP team about the changes that they have witnessed and the challenges of managing trademarks for the world’s biggest brewer

Litigating at the ITC: caught in a grey zone

United States of America
Despite its advantages, the average number of investigations instituted before the US International Trade Commission has almost halved since 2011. The agency now faces two significant obstacles to becoming a more prominent trademark litigation forum

Mexico shows robust filing figures, as services overtake goods

Mexico
In the first of a new regular magazine section focused on data-led trends we look at Mexico and how brands fare in the country, examining key filing statistics, top industries and the performance of the Mexican Trademark Office to determine areas of opportunity and risk

Columns

Canada: Balancing competing interests in GIs

Canada
United States of America
The Comprehensive Economic and Trade Agreement suggests that Canada sides with the European Union on the value of geographical indication protection. However, renegotiations of the North American Free Trade Agreement could result in a more nuanced regime

Trademark renewal risks: lessons on declarations of continued use and fraud claims

United States of America
As In Re Bose Corp and its progeny have illustrated, trademark owners cannot assume that a registration should or will be renewed in its original form and scope as a matter of course

Perspectives

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

Country Correspondent

China: Unfair competition online

China
Kangxin Partners PC
Online operators that use technical means to influence user choice or damage competing network products will be found in violation of the new Anti-unfair Competition Law.

United States: Case law shines a light on internet evidence at motion to dismiss stage

United States of America
Birch Stewart Kolasch & Birch LLP
Assessing the relevance of internet evidence can be a daunting task for rights holders. However, if submitted accurately at the earliest stages, such evidence may sway infringement proceedings

Italy: Do we need a vaccine against influencers?

Italy
Bugnion SpA
The popular practice of online personalities endorsing products for economic benefit has finally permeated the legal sphere – brand owners should be prepared to pull the plug on misleading ads

Mexico: Cat and mouse: how rights holders chase online infringers

Mexico
Uhthoff, Gómez Vega & Uhthoff
The anonymity offered by the Internet is a significant lure for infringers. However, despite the online landscape being largely ungoverned, Mexican rights holders can still take steps to protect their intellectual property

Canada: Online business expansion may still result in restricted trademark rights

Canada
Bereskin & Parr LLP
Canadian courts have demonstrated a shift in the interpretation of use of a trademark. Brand owners should consider how they engage online with consumers in order to maintain protection.

Turkey: Search engines yield mixed results on liability

Turkey
ATG Law Firm
Search engines offer wide-reaching advertising opportunities, but the law is patchy on where liability for use of metatags and keywords falls in a trademark infringement suit

India: Indian courts respond to thriving online market

India
RNA, Technology and IP Attorneys
With a growing incentive for traders to migrate to online retail marketplaces, Indian courts face a new set of challenges from disputes involving e-commerce