World Trademark Review Issue 75

October/November 2018

New leadership, new challenges? Industry insights on EUIPO operations

With the EUIPO looking towards a future under new leadership, we asked practitioners for their take on the office’s current operations and activities, and the challenges that the new management will face.

Trevor Little

Features

Rising sales, healthy filings and new opportunities in the dynamic cosmetics sector: exclusive data analysis

In this week’s industry data report, we provide a rundown of the cosmetics market from a branding perspective. We take a big picture look at sales growth and key trends and reveal that technology trademark filings are on the rise among major brands.

Despite the potential of the Middle East, excessive fees are leading to a shrinking trademark market: exclusive data analysis

In this week’s data report, we examine the state of the trademark market in the Middle East, taking an in-depth look at filing trends in Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the UAE in particular.

Authorities should distinguish between ads and trademarks: exclusive interview with PepsiCo’s Sergio Barragan

We speaks with Sergio Barragan of beverage giant PepsiCo to discover his approach to managing the company’s extensive Latin American brand portfolio.

“If people ask me what I do, I say that I sell cereal”: perspectives on brand management at General Mills

In our latest interview providing exclusive insights from leading corporate trademark professionals, we speak with Joshua Burke, senior IP counsel at US consumer foods conglomerate General Mills.

New leadership, new challenges? Industry insights on EUIPO operations

With the EUIPO looking towards a future under new leadership, we asked practitioners for their take on the office’s current operations and activities, and the challenges that the new management will face.

Making the right choice: an A-Z of EU trademark court practice and performance

In the first of our five-part series, trademark counsel from law firms across Europe provide an overview of the performance of their countries’ EU trademark courts over the past two years.

A-Z guide of EU trademark court practice and performance: Finland to Hungary

In the second of our five-part series, trademark counsel from law firms across Europe provide an overview of the performance of their countries’ EU trademark courts over the last two years.

A-Z guide of EU trademark court practice and performance: Ireland to Lithuania

In the third of our five-part series, trademark counsel from law firms across Europe provide an overview of the performance of their countries’ EU trademark courts over the last two years.

A-Z of EU trademark court practice and performance: Netherlands to Slovenia

In the fourth of our five-part series, trademark counsel from law firms across Europe provide an overview of the performance of their countries’ EU trademark courts over the past two years.

A-Z guide of EU trademark court practice and performance: Spain to UK

In the final part of our series, trademark counsel from law firms across Europe provide an overview of the performance of their countries’ EU trademark courts over the last two years.

Parallel imports remain a grey area for IP rights in East Africa

Kenya, Tanzania and Uganda each have different legal approaches to the treatment of parallel imports, making generalisations dangerous for trademark owners and importers alike.

Cloudy skies forecast for trademark licensees in the wake of Tempnology

In light of the recent Tempnology decision, parties and their trademark counsel must exercise more caution than ever when drafting trademark licence agreements.

How to maximise compensation in trademark infringement cases

In China, the standards and methods for determining compensation in trademark cases directly reflect judicial protection levels. However, canny rights holders can choose strategies to maximise the chances of higher awards.

Brazil on the path to Madrid

After over a decade of debate, Brazil is expected to join the Madrid Protocol next year. But while accession seems inevitable, local practitioners have mixed feelings about the move.

Well-known marks: multijurisdictional approaches to fame

Obtaining well-known status for a trademark can be a powerful tool for rights holders. However, different approaches must be used to secure enhanced protection. This three-part series considers the best route in 10 key jurisdictions, starting with the United States.

Well-known marks: multijurisdictional approaches to fame in Asia

Different approaches must be used to secure protection for well-known marks in different countries. This article considers the best route in key Asian jurisdictions.

Well-known marks: approaches to fame in Europe

Obtaining well-known status for a trademark can be a powerful tool for rights holders. In the third of a three part series, this article considers the best route in key European jurisdictions

Harmonisation in practice: a dialogue about foreign trademarks

Industry experts from the United States, the European Union and China outline the key considerations for those looking to expand their portfolios internationally.

The struggle to interpret Indian jurisdiction in online transactions

When it comes to exercising jurisdiction in online disputes, Indian jurisprudence has some way to go – but case law analysis may provide critical insight.

Columns

Louboutin: the interplay of colour and shape

Louboutin’s win before the European Court of Justice shines a light on the complexities of colour marks.

Perspectives

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

Country Correspondent

Canada moves ahead with fluid marks

Canada
Bereskin & Parr
Major amendments to Canada’s Trademarks Act are set to broaden the ability of brand owners to protect fluid marks, but will also introduce new obstacles to slogans.

Kapow! How to manage marks in the world of comic books

China
Kangxin Partners
Fluid marks can breathe new life into a brand and are frequently used to grab audience attention. However, a trademark must be used consistently to maintain its registration.

Safeguarding dynamic marks and slogans in India

India
RNA, Technology and IP Attorneys
Fluid trademarks and slogans are excellent marketing tools as they engage customers and improve sales, but their enforceability remains challenging.

Keeping it fresh: Italy’s new approach to distinctive signs

Italy
Bugnion SpA
Although branding companies and professionals have embraced the concept of fluid trademarks, it remains a highly complex field requiring close cooperation between IP attorneys and brand owners.

Can fluid marks be considered part of a client’s IP portfolio in Mexico?

Mexico
Uhthoff, Gómez Vega & Uhthoff SC
Mexico recently introduced a number of legal amendments whereby the types of registration for distinctive signs were extended to include non-traditional marks. However, fluid mark protection remains a riddle.

Perpetual revolution: protecting fluid trademarks in Russia

Russian Federation
Gorodissky & Partners
Fluid trademark strategies can strengthen brand recognition but the non-conventional nature of such marks needs to be understood to avoid weakening protection and risking non-use cancellation cases.

How to avoid pitfalls in Turkey when it comes to dynamic marks

Turkey
ATG Law Firm
Fluid trademarks are fun and innovative marketing tools for brand owners, but as there is no express protection for such marks in Turkey, they can be legally unstable and vulnerable.