WORLD TRADEMARK REVIEW Issue 81

Asia’s top filers reveal strong growth prospects

World Trademark Review takes a deep dive into the top Asia-Pacific trademark offices and how they are modernising their systems to better protect applicants and streamline procedures. While this has positively affected filing levels, economic performance and domestic businesses will be key going forward.

Bridget Diakun

Features

Wrestling with a heavyweight portfolio: exclusive interview with WWE’s IP counsel

At the helm of WWE’s IP department reign two central figures: Lauren Dienes-Middlen and Matthew Winterroth. WTR asked them to reveal the secrets of their success.

Diversity in the legal workplace: interview with the global chair of A&O’s LGBT+ network

This week, Stonewall, an LGBT+ rights charity, named Allen & Overy one of its Top Global Employers. WTR sat down with Jim Ford, chair of the firms A&Out network, to discuss the importance of LGBT+ diversity and inclusion in law firms.

Reversing the gaze: how trademark specialists can brand themselves better

There is a somewhat ironic aversion to branding in law firms among many trademark practitioners. We investigate the ways in which firms and individual lawyers can promote their practices and draw in new clients.

NASA has one small portfolio of trademarks, one giant global identity for its brand

In an exclusive data analysis, we find the American space agency has a minimalist portfolio – a trend among federal agencies – yet maintains a strong brand identity around the world.

What Volkswagen’s portfolio tells us about disruption in the automotive industry

With the rise of autonomous driving technology, ride-hailing companies and micromobility transportation, traditional automotive manufacturers need to evolve fast. Positively, the strength and reputation of existing brands will prove key to fighting off digital start-ups.

Crowdsourcing counterfeits: is this the future for enforcement information gathering?

New technology has made it easier for brands to ask the public for assistance in the fight against fakes. World Trademark Review investigates whether this method is worth pursuing or if other enforcement strategies are more effective.

Why trademarks – and trademark attorneys – are a key part of M&A

With M&A activity on the rise, trademark professionals need to conduct a number of key checks. The first step, though, is to ensure that they are involved at the outset.

A tale of two flags: who owns the right to use?

The Australian government is considering whether to compulsorily acquire the rights to use the Aboriginal flag on public policy grounds. The debate raises questions over whether similar moves could occur in other jurisdictions.

EU design strategies: maximising the chances of enforcement success

Registered Community designs have been enforced with varying success. However, several steps are available to maximise the scope of the protected design, making it easier to combat infringers.

Colour marks: still a grey area?

Colour marks remain difficult to obtain, but brand owners can take certain steps to enhance their chances of success.

Trademark licensing in Africa: an A-Z whistle-stop tour

With Africa proving to be a particularly lucrative region for brands seeking licensing opportunities, we examine what rights holders need to know about trademark licences from a swathe of nations across the continent.

Turning the tide: how China is fighting back against malicious filings

Amendments to China’s Trademark Law are due to take effect on 1 November 2019. The changes should aid the authorities in their bid to crack down on malicious filings and trademark hoarding.

Co-branding: cooperation or competition?

As with all partnerships, co-branding has its positive and negative aspects. But with valuable brand goodwill at stake, preparation is key to avoiding the pitfalls.

US law inches towards protecting trademark reputation without use

Two US Court of Appeals opinions have created the possibility that a plaintiff could bring a passing-off action based on use of its trademark outside of the United States only – a powerful new tool for challenging infringers that are first to use the trademark in the United States.

Brazil accedes to the Madrid Protocol: an inside story – and what happens next?

Heralded as a breakthrough, Brazil’s accession to the Madrid Protocol is a landmark development for the international trademark system. We take a closer look at this move and the lessons that can be learnt from it.

Poland’s economy continues to exhibit remarkable growth, but can local brands keep up?

The former communist state has developed a strong market economy, and local brands have the opportunity to exploit these conditions to gain both domestic and international traction.

Inside the IP office of tomorrow: exclusive interview with IPOS chief executive

WTR sits down with Daren Tang, chief executive of the IP Office of Singapore, to get the inside track on how the office is evolving to play a bigger role in the country’s business environment.

Columns

Stronger together: building diversity and inclusion through partnerships

From informal initiatives to formal programmes, diversity activities can take many forms at law firm level.

Beer wars and false advertising: the challenges of obtaining preliminary injunctive relief

A dispute involving Bud Light’s Super Bowl advertising provides important insight into the handling of preliminary injunctions.

Roundtable

Enforcement in an era of data privacy and redacted WHOIS

Brand experts offer insight and practical guidance on how to ensure that enforcement efforts are not adversely affected by reduced access to data.

Country correspondent

China's Anti-unfair Competition Law: cracking down on malicious infringement in advertising

China
Kangxin Partners PC
Recent amendments to China’s Anti-unfair Competition Law have seen legal compensation rise from Rmb3 million to Rmb5 million, which goes some way to addressing the significant cost of stopping infringement.

ECJ case law displays nuanced understanding of comparative advertising

European Union
Bugnion SpA
A case from the European Court of Justice offers invaluable guidance for what is acceptable in comparative advertising, especially when it comes to comparing the prices of goods sold in different types and sizes of outlet.

Unfair competition in Mexico: how to play by the rules in advertising’s commercial battles

Mexico
Uhthoff, Gómez Vega & Uhthoff SC
Competitive advertising strategies should prompt healthy commercial battles and bring out the best in advertising, yet some still use advertising to confuse and mislead customers. Mexico’s unfair competition legislation defends the rights of victims to dubious advertising practices.

Building an effective enforcement strategy to fight unfair competition in advertising

Russian Federation
Gorodissky & Partners
In the fight against unfair marketing practices, businesses operating in Russia would be well advised to understand the correlation between unfair advertising and unfair competition and to take account of the relevant legal provisions so as to build up an effective enforcement strategy.