World Trademark Review Issue 80

August/September 2019

How trademarks can transform a start-up into a unicorn

A new study shows that start-ups and SMEs that invest in trademarks have a much better chance of experiencing high growth, yet only a small proportion of such businesses make this investment.

Bridget Diakun

Features

Mind the gap – why law firms must bridge the gender divide

The legal sector is traditionally a male-dominated industry and although that is changing, more work needs to be done to combat inequality.

How Alibaba is fighting IP infringement on two fronts

Alibaba Vice President Matthew Bassiur invites brands to collaborate with the company in the fight against fakes as the group collects WTR’s award for Asia-Pacific Team of the Year.

Daniel Wellington keeps a minimalistic portfolio to focus on a bulletproof enforcement strategy

With its origins in Instagram, Swedish watch company Daniel Wellington is no stranger to online counterfeit issues. The IP team’s core activity lies in enforcement, working both offline and online to purge fake goods.

PepsiCo teams goes defensive to protect brand

The trademark team operating in Latin America is faced with a unique set of challenges – being prepared is the best defence against the high level of infringement it faces.

Trademark group behind Game of Thrones scoops North America Team of the Year

The WTR North America Team of the Year Award was presented to the team handling HBO’s trademark legal needs, including the TV phenomenon Game of Thrones. Trademark head Judy McCool offers insights into protecting brands connected to the biggest show on Earth.

adidas team draws global recognition for stellar enforcement

As a global powerhouse, adidas has the gargantuan task of protecting its brand and policing misuse and infringement, but the Fashion, Cosmetics and Luxury Goods Team of the Year is up to the challenge.

Strong internal communications, flexibility and diversity make for a winning team at MetLife

Juggling global operations spread out among affiliates can be a daunting task but open communication, company-wide interaction and knowledge sharing allows these trademark professionals to manage an impactful and efficient portfolio.  

How the Mars trademark team is knuckling down on efficiency in transition to e-commerce

The in-house team at food giant Mars continuously adapts its approach to tackle the range of prosecution and enforcement challenges it faces. Although the department is decentralised, strong internal communication keeps the brand’s IP strategy robust and consistent.

Zoetis trademark team triumphs in a year of major acquisitions

Zoetis’ Jane Ungaro shares her trademark strategy and methodology after a record-breaking year for acquisitions to reveal how Zoetis pipped Pfizer and Specsavers to WTR's Healthcare and Life Sciences Team of the Year.

How the Reckitt Benckiser trademark team took restructuring in its stride

Restructuring can cause a number of headaches for a company, but the WTR Household and Consumer Goods Team of the Year, Reckitt Benckiser, has proven that adaptability and effective communication are the secret to ensuring that enforcement efforts remain uncompromised during times of upheaval.

Stranger things: how trademarks helped turn a DVD exchange company into an international brand

Netflix’s human approach on social media extends to its legal team; Ali Buttars and Jeremy Kaufman discuss the difficulties and techniques in running the streaming giant’s trademark section.

Sage Therapeutics steers a steady course for pharmaceutical marks in Boston

We take a closer look at the inaugural winners of the WTR Industry Award for Local Team of the Year, Cambirdge-based Sage Therapeutics and how it is winning plaudits for innovative marketing and branding work.

The Scotch Whisky Association faces Brexit and GI infringement with a stiff upper lip

Lindesay Low, deputy director – legal at the Scotch Whisky Association, reveals how the company has upheld enforcement efforts amid Brexit chaos and why it remains confident in the face of international infringement, proving itself the worthy winner of WTR’s Not-for-Profit Organisation Team of the Year.

How effective teamwork drives 7-Eleven’s trademark strategy

Alison McDade, senior trademark counsel at 7-Eleven, reveals why communication and integration are key to protecting the IP rights of the world’s largest convenience store franchise.

Nintendo takes a vigilant stance against infringement

Following a 2018 infringement suit that won the company a permanent injunction and over $12.2 million in damages, we reflect on the vigilant stance taken by WTR’s Software and Online Services Team of the Year – Nintendo of America. 

FIFA reflects on scoring an IP enforcement win at the 2018 World Cup in Russia

Daniel Zohny, IP head at FIFA, looks back at the intense workload taken on by his team during the 2018 World Cup and looks forward to the next tournament as the worthy winner of WTR’s Sports, Entertainment and Media Team of the Year.

Intel director of trademarks reveals the key ingredients for successful brand protection

Christopher George, director of trademarks and brands at Technology and Consumer Electronics Team of the Year Intel, has spoken to WTR about the difficulties his team faces when tasked with protecting the brands of so-called ‘ingredient’ tech components, rather than final products.  

E-sports open up a whole new frontier for the Caesars Entertainment trademark team

WTR sits down with John Wilson, senior vice president and chief counsel of intellectual property and commercial at Caesars Entertainment, to discuss how the fourth-largest gaming company in the world is broadening its horizons.

Last year was big for the Toyota brand: could 2019 be even bigger?

Toyota has taken big strides in the last year, with a 17% increase in brand value in 2018 alone. Managing counsel Theresa Conduah discusses the trademark implications of this busy 12 months.

Game of Thrones and collegial respect: In-House Leader of the Year Judy McCool reveals what makes her tick

In an exclusive interview, Judy McCool – senior vice president, legal affairs at Home Box Office – reveals why sharing expertise, empowering others and embracing change are the cornerstones of effective leadership.

Build bridges, tell the truth: WTR Lifetime Achievement winner on the key to enforcement success

The eminent Jack Chang sits down with WTR to give an insight into his varied career. From establishing the China Anti-counterfeiting Coalition and the Quality Brands Protection Committee to being personally thanked by Vice Premier Madam Wu Yi for his work, Chang has significantly altered the trademark landscape in China.

How trademarks can transform a start-up into a unicorn

A new study shows that start-ups and SMEs that invest in trademarks have a much better chance of experiencing high growth, yet only a small proportion of such businesses make this investment.

Enhancing enforcement success in China: top tips from market experts

An understanding of the law is just the first step to successful brand protection in China. WTR talked to local in-house counsel and private practitioners to get the inside track on how to craft a multifaceted trademark strategy for the region.

Practical strategies for managing luxury brands

A group of senior trademark and brand professionals recently convened in New York to discuss strategies for protecting, enforcing and monetising fashion and luxury brands. This special report details some of the key points and presents essential takeaways.

Practical implications of the new EU Copyright Directive

The new EU Copyright in the Digital Single Market Directive has significant potential for content creators and publishers – but the nuances of the new rules must be properly understood.

New dawn in Nigeria: evolution of the trademark ecosystem in Africa’s biggest economy

Nigeria has long been a challenging jurisdiction in which to obtain and enforce registered trademark rights. Recent changes represent significant and positive steps forward, as issues are finally being addressed.

National treatment: overcoming obstacles to appealing TRAB decisions at the Beijing IP Court

The principle of national treatment may hinder the ability of some foreign companies to exercise their right to appeal Trademark Review and Adjudication Board decisions to the Beijing IP Court. However, there are various strategies that foreign companies can employ to overcome the hurdles that they face.

CBD-infused food and beverages: in the crosshairs for a food labelling class action?

With the regulatory gap in food and beverage labelling yet to be bridged, the legal landscape for manufacturers looking to enter the hemp-based cannabidiol market remains murky.

Non-traditional marks in Latin America: the current landscape

The acceptance of non-traditional trademarks has increased in most Latin American jurisdictions in recent years. We provide an overview of the current state of play.

The top filers and a vision for the future: inside EUIPO operations

Less than a year into Christian Archambeau’s tenure as executive director, the EUIPO is laying the groundwork for future expansion. World Trademark Review’s annual focus on the office assesses current operations, reveals the most proactive filers and explores how the agency is taking a global view of trademarks.

Road to Russia: why Rospatent is positive about the future

Over the past couple of years rapid improvements have been made at the Russian IP office. In an exclusive feature, the head of the registry looks at its current operations and speaks candidly about plans for the future.

Columns

Why the legal profession should encourage diversity and inclusion

Embracing diversity and nurturing inclusion is not only the right thing to do, it is good business. Yet the legal profession has been slow to change and capture the opportunity.

Roundtable

Best practice in litigation strategies: global perspectives

Trademark experts from around the world offer practical guidance on how to maximise the chances of litigation success in their jurisdiction.

Country Correspondent

Restrictions and conflicts – challenges faced by pharmaceutical trademarks in China

China
Kangxin Partners PC
Pharmaceutical products play a key role in public healthcare. As a result, the protection of pharmaceutical trademarks is fraught with unique challenges, particularly when it comes to a pharmaceutical product’s name and generic name.

EU offers increasingly interesting market for pharmaceutical trademarks

European Union
Bugnion SpA
The European Union offers an increasingly interesting market for pharmaceutical companies, thanks to its growing elderly population, above average expenditure on drugs and robust use of branded drugs over generic equivalents. Pharmaceutical trademarks are a crucial element of this.

Infrequent pharmaceutical disputes have far-reaching consequences in Malaysia

Malaysia
Henry Goh & Co
While disputes over pharmaceutical trademarks are few and far between, decisions can have a significant effect on product manufacturing and public health.

Healing confusion – choosing the correct name for pharmaceutical trademarks

Mexico
Uhthoff, Gómez Vega & Uhthoff
Similarity among prescription drug names should be avoided, as the potential confusion carries a risk to consumer health. Bringing the best pharmaceutical trademark to market can be arduous, but it will assist in the safe prescription of medication.

Naming, registering and advertising pharmaceutical trademarks in Russia

Russian Federation
Gorodissky & Partners
The pharmaceutical industry is a high-tech development priority and pharmaceutical production must happen alongside the development of an appropriate IP protection strategy. Pharmaceutical trademarks owners would be well advised to consider any issues in the context of the Russian market.

Branding pharmaceuticals: drug naming and non-traditional trademarks

United States of America
Lewis Roca Rothgerber Christie LLP
There are numerous hurdles to branding a new pharmaceutical. In addition to traditional marks, non-traditional marks offer a route to protection where a drug’s appearance has acquired distinctiveness, but obtaining such registrations is not all plain sailing.