WORLD TRADEMARK REVIEW Issue 82

Trademarks off-world: a new frontier or lost in space?

With space exploration travelling further than ever before and celestial vacations on the horizon, a rudimentary trademarks framework for Earth’s orbit, the moon and Mars is no longer light years away.

Clark W Lackert and Jonathan Goodwill

Features

Crafting cross-company collaboration: exclusive interview with Uber’s Rafa Gutierrez

While a relatively young brand, Uber faces the gamut of IP risks – from phishing to genericism. Rafa Gutierrez explains how he keeps the platform’s IP fully protected.

“There’s a lot of suffering out there” – leading academic warns of the legal profession’s mental health problem

Richard Collier, a professor of law and social theory at Newcastle University, tells WTR why he is concerned for the mental health of a generation of lawyers, and what the industry can do to effectively improve employee wellbeing.

The new model – how the traditional law firm model is evolving

As client demands evolve and change, so too do law firm models. From virtual practices to digital packages and subscription services, the options are myriad. But which will stand the test of time and which best suit client needs?

Diageo puts brand building at the core of its business – and it works

The British multinational sees success because it never guesses about consumer needs and invests in targeted marketing.

A new dawn for grocery stores: how major brands are changing to counter low-cost rivals

The departure of Tesco’s CEO signifies the retailer’s successful turnaround, but this is just the beginning as long-time players overhaul businesses to stay in the game.

Around the world in 18 predictions

As a new decade dawns, World Trademark Review asks practitioners around the world for their top takeaways from 2019 and their predictions for the year ahead.

Use it or lost it: no one is too big to lose a trademarks for non-use

There is an almost infinite amount of evidence that could be put forward to support a claim that a trademark has been used, but it has to be up to scratch. Failure to effectively prove use can have dire consequences – as the recent BIG MAC decision illustrates.

A question of association in East Africa

The use of associated trademarks is becoming more prevalent in East Africa, but there are a number of important factors that brand owners need to keep in mind.

Better together: licensing best practice for the Indian market

India is one of the fastest growing economies in the world and has seen a spurt in inbound as well as outbound investments involving trademark licensing agreements. However, there are crucial legal considerations to balance with commercial plans.

Taking a stand against the stans: counterfeiting trends in Central Asia

Central Asia is facing a series of unique counterfeiting problems, but a detailed look into the legal measures adopted in the region suggests that Kazakhstan may have the answers.

#FairUse? Third-party trademarks in social media hashtags

European and US case law suggests that there are very few situations in which use of a third party’s trademark in a hashtag is permissible. As a result, those looking to advertise on social media need to be aware of the strict rules that apply.

Twenty counterfeiting hotspots to be aware of in Latin America

Although Asia is often seen as the centre of global counterfeiting activity, sales of fake goods are rising across Latin America. We present 20 markets in the region that are particularly problematic for brand owners.

Brands could be the centre of renewed focus during Israel’s scale-up phase

The start-up nation’s register is dominated by foreign applicants but, as the government throws its weight behind maturing businesses, strong branding will help domestic companies to become a feature of the economy.

Top filers at the USPTO revealed

Whether concerned about bad-faith filing at the USPTO or seeking to benefit from US marks, the level of demand from Chinese entities has been a remarkable phenomenon over the past few years – as the filing data reveals.

Changing of the guard at the USPTO

As Mary Boney Denison retires from her tenure as USPTO commissioner for trademarks, she reflects on her final year at the office, which involved tackling improper filing behaviours, the introduction of mandatory e-filing and significant IT changes.

Columns

Practice management: creating a successful mentoring programme

While the value of mentoring is undisputed, it can take many forms, some of which are more fruitful than others. Finnegan reveals its creation of a mentoring programme and, crucially, how it measures success.

Co-published

Next-level brand protection: best practice tips from industry leaders

Senior brand representatives of some the world’s largest industry names gathered at a recent WTR boardroom event to share strategies and success stories for combating counterfeits and knock-off goods. Sterne, Kessler, Goldstein & Fox’s Monica Riva Talley outlines key takeaways from the discussion.

Roundtable

From billboards to influencers: navigating new advertising rules across the Americas

Trademark experts offer insight into the advertising regimes in their respective jurisdictions and, crucially, how brands can avoid falling foul of the law.

Country correspondent

Everywhere you look: IP rights and other FMCG challenges

China
Kangxin Partners PC
Fast-moving consumer goods (FMCG) are everywhere, so it comes as no surprise that FMCG brands face challenges across jurisdictions. A closer look at the Chinese regime highlights some of the particular issues that rights holders face in this market.

EU regulations smooth the way for FMCG labelling rules

European Union
Bugnion SpA
The publication of the EU Regulation on the Provision of Food Information to Consumers has created a bridge between EU labelling rules and the introduction of new obligations to meet the growing demands of the most discerning customers of fast-moving consumer goods.

Fast-moving change for FMCG industry: how to protect and enforce your IP rights

Mexico
Uhthoff, Gómez Vega & Uhthoff SC
Changes in consumer preference and behaviour have transformed the fast-moving consumer goods industry. IP rights are fundamental to the success strategy of any consumer goods company, enabling brand owners to protect their brands and consumers from imitations.

Clearing the market of FMCG counterfeits

Russian Federation
Gorodissky & Partners
Russia’s fast-moving consumer goods market is growing thanks to increasing consumption and accelerated competition between manufacturers and retailers. Players in the market should consider IP protection, advertising and unfair competition when building an effective enforcement strategy.