WORLD TRADEMARK REVIEW Issue 83

A peek behind the curtain

The Global Trademark Benchmarking Survey provides exclusive insight behind the scenes at corporate trademark practices and reveals the risks and opportunities that law firms face. This year, we uncover attitudes towards industry associations and how diversity concerns are informing hiring practices and the relationship with key stakeholders.

Trevor Little

Features

WTR Industry Awards 2020: the shortlist revealed

The WTR Industry Awards 2020 honour leading trademark teams and individuals across a range of sectors. Here we unveil the shortlist.

Why law firms need CEOs: exclusive interview with Harness Dickey’s Bill Coughlin

Bill Coughlin, previously CEO of Ford Global Technologies, has taken up this role at Harness Dickey – a first for the firm. As more law firms appoint CEOs, both with and without legal experience, WTR speaks to Coughlin to find out why this trend is set to continue.

Moving the needle: how trademark professionals achieve change

Lobbying is fundamental work for anyone looking to transform the IP industry. Politicians and experts from the United States to China offer their best tips in how to actively change the profession.

Even if you do not want trademark insurance, you need risk quantification

Many small businesses are unprepared for the costs of IP lawsuits or infringement. Until companies understand that intellectual property is about more than basic protection, they will overlook an important aspect of their IP strategy.

Why the brand bubble could be about to burst

With over 20 years’ experience assessing the value of intangible assets worldwide, Brand Finance’s David Haigh warns that slow growth and an international crisis could mean that brands are on the brink of a global crash.

Making trademark decisions based on cost considerations: a model for action

In environments where budgets are finite, creating a resilient, quantifiable methodology for making strategic filing decisions is key.

Navigating geographical indications in the European Union

While European IP practice has begun to actively recognise and protect geographical indications, they are still treated with trepidation in the IP world.

Where Sharia meets intellectual property: brand protection in GCC states

For brand owners that need to protect and enforce their intellectual property in the Persian Gulf, understanding the impact of Sharia law can help to ensure their actions are more effective.

OEM for export: balancing trademark rights and Chinese economics

Despite courts vacillating between opposing positions on whether affixing a trademark to OEM goods for export constitutes use or non-use of a trademark, the Supreme People’s Court now appears to have settled on an answer.

Case-handling insights – from initial strategising to trial management

Whether before lay jurors or a single judge, the art and science of trial advocacy remains largely the same – as this hypothetical case journey illustrates.

Cannabis legislation opens the door for pharmaceutical brands in Latin America

With new legislation regulating the use of cannabis-based medicines in Argentina and Brazil, the emerging market is an open playing field for pharmaceutical brands looking to make their mark in Latin America.

China’s rapid expansion: a lasting impact on the trademark landscape

Chinese filing data reveals that while trademark output may be slowing down, local IP owners are just getting started as brand values skyrocket and focus turns to foreign registers.

Innovation domination: the IP offices breaking through boundaries

In the 2020 edition of our exclusive research project into the most innovative IP offices in the world, we found significant improvements in non-core tools and services – although gaps remain.

Columns

Diversity: Where we’ve been and where we’re going

Progress on diversity in the legal profession has been frustratingly low. In response, Intel is demanding more from its outside law firms – in ways that are making headlines.

Recruitment: Building the team behind the world’s top brand

As Amazon is crowned most valuable brand for the third year in a row, we take a closer look at what it takes to build and maintain the IP team behind this success.

Wellbeing: Adding health to the trademark practice agenda

Whether working in the corporate or law firm environment, trademark practice leaders should ensure that they have a considered wellbeing strategy in place.

Equality: The challenge of gender equality in intellectual property

The Chilean National Institute of Industrial Property has introduced a number of new initiatives in a bid to improve the representation of women in intellectual property.

Roundtable

Brand creation and protection: out with the old

Trademark experts from across the globe offer critical insight into brand creation best practice and guidance on pitfalls to avoid.

Country correspondent

Demonstrate a high reputation to evict squatters

China
Kangxin Partners PC
Trademark squatting is rife in China, so it pays to register fast. If a dishonest filing has already been made, showing that a trademark enjoys a high reputation can help in opposition or invalidation proceedings.

Sky v SkyKick: was the CJEU swayed by Sky’s well-known brand?

European Union
Bugnion SpA
The long-awaited Sky v Skykick decision brings new clarity to how well-known trademarks are treated in the European Union, although it also raises the question of what impact a strong brand might have on a court’s deliberations.

New legislation brings even greater protection for well-known marks

Malaysia
Henry Goh & Co Sdn Bhd
The passing of new trademark legislation has strengthened the hand of owners of well-known and famous marks in Malaysia. Case law under the new statute is sparse, but the courts remain supportive of rights holders.

Something to declare: how an IMPI finding can help avoid stand-offs

Mexico
Uhthoff, Gómez Vega & Uhthoff SC
Differences in the treatment of well-known and famous marks create pitfalls for the unwary. An administrative declaration is the best option, but obtaining one can be burdensome.

Securing well-known status: if at first you don’t succeed, conduct market research

Russian Federation
Gorodissky & Partners
With few marks recognised as well known in Russia, evidence of use in the country, consistent branding and market research can be key to gaining such status, but it often requires perseverance.

When will I be famous?: protecting well-known foreign marks in the United States

United States of America
Lewis Roca Rothgerber Christie LLP
A split among US circuit courts and an administrative court on the application of the well-known marks doctrine makes registration in the United States more important than ever. But famous marks will always attract greater protection.