World Trademark Review Issue 74

August/September 2018

When reality and video games collide

The treatment of the borrowing of real-world elements in video games depends on the nature of the underlying rights – creating a complicated environment for rights holders to navigate.

Bryan Wheelock

Features

UK trademark scene post-Brexit: a world-class IP office dealing with uncertainty in a volatile brand environment

We provide a breakdown of the UK trademark market – examining how Brexit has affected filing strategies, inspecting brand value trends, and analysing the stellar performance of the UK IP Office.

“You do what you can to reduce risk”: exclusive interview with Rovio Entertainment’s Robert Hagelstam

Following a brief interlude for INTA’s Annual Meeting in Seattle, our series of articles providing insights into the work of leading corporate trademark professionals returns this week with insights from Robert Hagelstam.

Honeywell chief IP counsel on the transforming trademark enforcement landscape in China

World Trademark Review catches up with Jerry Xia, deputy general counsel and chief IP counsel, Asia Pacific, for Honeywell. He shares his insights into how the Chinese brand protection landscape has developed in recent years, offers some practical tips for managing trademarks in the region.

From obscure speciality to breaking news: GIs under the spotlight

Geographical indications have hit the headlines in recent months, with mainstream debate grappling the extent of their protection – but why have they become such a hot political issue?

Protecting Scotch whisky in a changing world

The Scotch Whisky Association’s director of legal affairs pulls back the curtain to reveal how the industry’s heritage is protected.

Riding the tidal wave: USPTO faces 10% rise in trademark applications

With a 10% rise in trademark applications mostly spurred by Chinese filings flooding the USPTO in 2017, questions have been raised about whether the office can cope with this influx – both now and in the future.

China litigation trends: a data deep dive

With the enforcement landscape rapidly evolving, analysis of litigation data provides unique strategic insight into brand protection efforts – and reveals the brands filing the most infringement actions.

The future’s green: cannabis brands on the rise in Canada

With the legalisation of recreational cannabis impending in Canada, new business models and opportunities are emerging for a surprising variety of brand owners.

Chinese players fail to make the cut in the fashion world as major brands prove resilient: exclusive analysis

Examining the apparel sector, we show that the leading brands have remained robust, analyse how filing patterns have changed, and reveal that Chinese brands have failed to make the cut in the list of the world’s leading fashion brands.

Concern is building for IP practitioners: the uncertain future of WHOIS

While the GDPR entered into force on 25 May, the provisional model adopted by ICANN to bring the WHOIS database into compliance is a compromise that does not seem to meet the strict requirements of the new European regulation or answer the needs of IP practitioners.

Counterfeiting in Africa: an A-Z guide

With Africa proving particularly vulnerable to the sale of counterfeit goods, we take a look at some of the problems and solutions from a wide swathe of nations across the continent.

10 key trends in licensing and how to adapt to them

With licensing now a $100 billion industry, it has become a very attractive and widely used business tool, but companies seeking to leverage brand awareness, build brand equity and drive new revenues need to stay on top of the latest market trends in order to succeed.

WTR Industry Awards 2018

On 22 May 2018 World Trademark Review announced the winners of its 12th Industry Awards at an exclusive ceremony at the Seattle Art Museum. The awards are designed to recognise the vital work carried out by in-house trademark counsel and to identify the teams and individuals that are performing their functions to the highest possible standards.

In-House Counsel of the Year: Elena M Grimme

Asia-Pacific Team of the Year: New Balance

Europe, Middle East and Africa Team of the Year: Harley-Davidson

Financial and Professional Services Team of the Year: Visa

North America Team of the Year: Amazon.com

Fashion, Cosmetics and Luxury Goods Team of the Year: Superdry

Latin America Team of the Year: Grupo Televisa

Food, Beverages and Tobacco Team of the Year: Lindt & Sprüngli AG

Healthcare and Life Sciences Team of the Year: Sandoz International

Household and Consumer Goods Team of the Year: Velcro Companies

Internet and Telecommunications Team of the Year: Google

Not-for-Profit Organisation Team of the Year: Rotary International

Retail Team of the Year: Starbucks

Software and Online Services Team of the Year: Facebook

Sports, Entertainment and Media Team of the Year: Netflix

Technology and Consumer Electronics Team of the Year: Apple

Travel and Leisure Team of the Year: Expedia Group

Vehicles and Transport Team of the Year: American Airlines

Lifetime Achievement Award: J Thomas McCarthy

After his invaluable contribution to the global trademark community was recognised at the WTR Industry Awards, J Thomas McCarthy sat down with us to reflect on an illustrious career

When reality and video games collide

The treatment of the borrowing of real-world elements in video games depends on the nature of the underlying rights – creating a complicated environment for rights holders to navigate.

Columns

Mental health in intellectual property – breaking down barriers

One factor which is frequently associated with mental health issues is work-related stress, something with which professionals in the IP industry are familiar. We look at how best to recognise and address this issue.

Perspectives

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

Country Correspondent

Protecting fashion: a rounded IP strategy

Canada
Bereskin & Parr LLP
Canada presents options for those seeking to protect and enforce rights in luxury brands, including effective mechanisms and alternatives for strategic defence and enforcement.

China’s fashion and luxury brand challenge: trademark squatting and parallel imports

China
Kangxin Partners PC
Regionality is a well-known characteristic of trademark protection and brings particular jurisdictional challenges for fashion and luxury brands. In China, these challenges include trademark squatting and parallel imports.

India promises market potential but challenges remain for luxury brands

India
RNA, Technology and IP Attorneys
While luxury brands are increasingly entering the Indian market, proving India’s potential as a destination for luxury products, they face some formidable challenges, including high import duties, lack of quality retail space and the ever-present threat of counterfeiting.

Legal fakes and the shopping experience – Italy’s fashion challenges

Italy
Bugnion SpA
Some so-called ‘legal fakes’ in Italy have so successfully fooled consumers and won over luxury and fashion brand fans that they have essentially supplanted the original brands, which are yet to conquer the country.

Symbols of the rich and famous: challenges for fashion and luxury brands

Mexico
Uhthoff, Gómez Vega & Uhthoff
Innovation, notoriety, protective registration and counterfeiting are key challenges for fashion and luxury brands. Fortunately, Mexico has a complex system of enforcement in place.

Russia’s fight against fakes, imitations and replicas

Russian Federation
Gorodissky & Partners
Anti-counterfeiting measures will never succeed in removing all counterfeits from the market, but they do make it significantly more difficult for counterfeiters to produce and sell fakes.

Criminal complications – Turkey’s counterfeiting challenge

Turkey
ATG Law Firm
Turkey is a tourist hot spot – but as the visitor numbers escalate, so too do the fake products. A good brand protection strategy can help to reduce the visibility of counterfeit products riding on the coattails of a trademark.

Everything old is new again? Protecting traditional fashion designs as non-traditional marks

United States of America
Birch Stewart Kolasch & Birch LLP
A pending US district court case on a fashion company’s efforts to protect a handbag design as a non-traditional trademark under US law – even though variations of the design have long been in the public domain – should provide much-needed clarity on this area.