World Trademark Review Issue 76

December 2018/January 2019

GI face-off – debating current geographical indication protections

We bring together two organisations with different perspectives on geographical indications to discuss the best route forward for this unique form of protection.

Massimo Vittori and Shawna Morris

Features

“GDPR has made brand rights enforcement online much more difficult” – exclusive interview with ESPN’s Allison Cantor

World Trademark Review speaks with Allison Cantor, principal counsel at ESPN, about how she balances her role as the company’s sole in-house trademark counsel with her other commitments, the difficulties posed by the implementation of GDPR, and much more.

“What I saw in China 8 years ago, I am now seeing in Brazil”: insights from New Balance’s brand protection lead

We speak to Daniel McKinnon, head of global brand protection at New Balance, about his approach to trademark enforcement, “paltry” damages awarded in China, the problems of “parasite brands”, and much more.

“There is no one-size-fits-all approach to enforcement” – exclusive interview with Mars Inc’s Sophie Anger

In an in-depth discussion with Sophie Anger, associate general counsel of marketing properties for the global petcare unit of Mars Incorporated, she offers enforcement tips, explains how efficiency is her guiding principle, and much more.

A perfect match? How marketing and legal can create a productive partnership

The historical ‘us versus them’ mentality between marketing and legal departments is not an inevitability – with the right approach, the relationship can be productive and mutually beneficial.

Design patent lessons from Apple v Samsung

The long-running face-off between Apple and Samsung over the design elements of their phone products offers a number of key takeaways for rights holders.

Can anonymous internet comments be used as evidence in trademark litigation?

While the role of anonymous confusion is still somewhat muddied by inconsistent approaches, parties should be prepared to handle concerns as to relevance, hearsay and authentication.

Where did it all go wrong in the WTO plain packaging dispute?

The World Trade Organisation’s panel report in the cases brought against Australia’s plain packaging regime is difficult reading – and some of its key arguments are without merit.

China joint ventures: an eight-point guide to success

Sino-foreign joint ventures are the most popular way to access the Chinese market, but business owners should beware the traps that lurk every step of the way.

E-commerce law aims to end the tug of war over online liability, but risks remain

With the E-commerce Law soon to take effect in China, brand owners take stock of the significant effect on online enforcement efforts.

India: the dawning of a new day

The Indian trademark office has made significant strides in improving its operations, efficiencies and digital efforts over the past 18 months. We look at how these could shape trademark protection in India in the coming years.

The fall of the own-name defence

The ability to raise the own-name defence in Europe is about to come to an end. This article examines the consequences of recent own-name legislative changes for businesses in Europe.

Non-traditional trademarks: a comparative analysis

Following a rise in the number of non-traditional trademark registrations, practitioners should be aware of the differences between obtaining protection in the European Union and the United States.

How internet policy is shaping brand protection: issues to track in the ICANN world

ICANN policy making has not always been followed closely by most rights holders, but a strong say from brand owners is essential as key policies are developed.

Columns

Genericism: is the trademark education video the new norm?

The recent Velcro video was highly successful in generating discussion about the use of the company’s trademark, providing crucial insight into brand communication strategies.

Don’t underestimate the rise of Chinese brands (and the impact for all rights holders)

In our latest opinion piece, we reflect on the scale of the Chinese government's brand incubation drive, and how this ambitious project is one that will have consequence for all rights holders - no matter where in the world they are located.

Perspectives

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

Country Correspondent

Our privilege to serve – thoughts on Canada’s law of privilege

Canada
Bereskin & Parr LLP
Privilege protects certain information and communication from disclosure. In-house counsel – as legal and business advisers to a company – must understand the limitations of privilege and how best to create and maintain it.

New system makes it easier to enforce IP rights in China

China
Kangxin Partners PC
There has been much criticism regarding the difficultly of filing an IP dispute in China. However, the country is streamlining the process of navigating the judicial system, with the goal remaining to stop infringements.

How India is helping brands combat counterfeiting

India
RNA, Technology and IP Attorneys
India is removing policy barriers to attract investment, while policy initiatives designed to improve IP rights enforcement look set to yield results. However, the availability of infringing, counterfeit and lookalike products is also on the rise.

Enforcement in Italy: legal peculiarities and effectiveness of IP protection

Italy
Bugnion SpA
There are advantages to protecting IP rights in Italy, including the possibility of starting legal action before registration has been granted in one of the 22 specialised courts across the country.

Mexican trademarks and the Commercial Treaty of North America

Mexico
Uhthoff, Gómez Vega & Uhthoff
The new North American Free Trade Agreement includes stronger measures against counterfeiting and piracy, including the ability to stop the entry and exit of suspected counterfeit products.

Parallel imports in Russia: same game, different rules

Russian Federation
Gorodissky & Partners
Parallel imports in Russia were once subject to the same treatment as counterfeit goods – but the golden age is over, as a compromise has been struck with regard to the national exhaustion of rights.

Choose your weapon: litigating trademarks US-style

United States of America
Lewis Roca Rothgerber Christie LLP
While there is an arsenal of tools with which a rights holder can address infringement, each requires careful consideration. The initial choice of remedy is a good place to start.