WORLD TRADEMARK REVIEW Issue 84

Private investigators in the spotlight: challenges and opportunities

The use of private investigators is on the rise, spurred by challenges that have arisen due to the coronavirus pandemic. However, this soaring practice has important implications for brand protection professionals.

Tim Lince

Features

Diversity and inclusion: in-house perspectives and challenges

In-house counsel from a range of industries and jurisdictions provide their insight into the diversity landscape of the trademark world, reflecting on their personal experiences and offering further steps towards a truly inclusive working environment.

The age of pandemic: everything in trademarks since covid-19 hit

Close analysis of global filing activity and brand management efforts in the wake of the coronavirus pandemic suggests that the impact of the economic crisis on the trademark landscape will be unlike that of any previous recession.

#Crisis: leveraging contractual protections in influencer agreements

With most trademark professionals adapting to new brand protection practices during the covid-19 pandemic, there are key contractual considerations to bear in mind when working with influencers in crisis situations.

Mirror image: using UK and US case law to protect publicity rights

The lack of a single, codified body of law to explicitly protect image or publicity rights on either side of the Atlantic means that high-profile individuals must draw from a variety of causes of action and legal tools to protect their interests.

Coop trademark decision highlights power of the pan-European dynamic injunction

A dynamic injunction issued by Italy’s Court of Bologna shines the spotlight on this invaluable IP weapon.

Enforcement in Africa: key qualities of a continent-wide brand protection strategy

WTR traverses the whole of Africa to provide brand owners with a comprehensive guide to brand protection across the region.

Trademark litigation forum shopping in China – what the data tells us

Venue selection is one of the most important considerations when litigating in China. Analysis of more than 11,000 court judgments issued in 2019 provides critical insight, which in turn allows for more nuanced strategic decisions.

Fighting the hydra – dynamic injunctions and the future of online piracy in India

India is the latest jurisdiction to turn to dynamic injunctions in a bid to curb online piracy, but questions remain about how effective a weapon they will prove to be.

Up against the ropes: why Indian brands need to start fighting back against counterfeiters

Tired of the country’s reputation as having a lax attitude to counterfeiting, Indian authorities are making a renewed effort to hold the right people accountable for infringement – including non-plussed brand owners.

Gotta get a message to you: a strategy for protesting at the USPTO

Letters of protest are an important tool for influencing decisions on problematic applications by third parties, but the wrong approach can have significant repercussion.

Key requirements for trademark licensing in Latin America and the Caribbean

When creating a regional licensing programme, understanding the nuances of the rules and regulations at jurisdictional level is key to success.

Defending against bad-faith applications in the Andean region

Protecting brands against parasitic trademarks can raise numerous challenges in Bolivia, Colombia, Ecuador and Peru – but there are ways to overcome them.

Mediation at the new innovation frontier: how Singapore is positioning itself as the global hub for IP dispute resolution

With more and more rights holders turning to mediation to settle IP disputes, the IP Office of Singapore is launching a number of innovative new tools to ensure that alternative legal resolutions are more effective.

The top filers and agility in action: inside EUIPO operations

World Trademark Review’s annual EUIPO focus assesses current office processes, reveals the most proactive filers and explores how the agency has responded to the impact of covid-19 on its employees, users and offerings.

Columns

Portfolio management: How to organise massive trademark collections

With the biggest active UK and EU trademark portfolio of any law firm, Marks & Clerk provides unique insight into some of the managerial challenges and solutions to coordinating huge portfolios across multiple regions.

Co-published

Diversity and inclusion: what success looks like in the trademark environment

Trademark experts offer critical insight into the creation, maintenance and monitoring of meaningful diversity and inclusion programmes.

Country correspondent

Supreme People’s Court opinion directs judges to protect owners’ rights

China
Kangxin Partners PC
A wide-ranging opinion recently issued by the Supreme People’s Court provides guidance on how the courts can better protect IP owners’ rights and promises to support trademark owners’ anti-counterfeiting actions.

Challenging times: anti-counterfeiting in the age of covid-19

European Union
Bugnion SpA
Locked-down consumers with heightened health worries could be easy prey for fast-acting counterfeiters. Legal authorities have foreseen some of the risks, but is the European Union sufficiently prepared for an influx of fake medicines and equipment?

High Court cans counterfeit beer importer’s weak defence

Malaysia
Henry Goh & Co
Malaysian court’s recent ruling in favour of a brewer follows established case law on registration but notes sound public health reasons for cracking down on fake alcoholic beverages.

Why Mexican rights holders may need to take the law into their own hands

Mexico
Uhthoff, Gómez Vega & Uhthoff SC
With softened criminal penalties and agencies powerless to initiate their own seizure proceedings, brand owners should make a concerted effort and the best use of the remedies available to protect their marks in Mexico.

Can we overcome counterfeiting without tackling the mindset behind it?

Turkey
Kenaroğlu Avukatlik Burosu
Trademark owners have a mountain to climb if they want local judges to grant orders to seize counterfeit goods in Turkey. Things are better at the border, but changes to judicial processes are required.

How to take counterfeiters down (cheaply) during a pandemic

United States of America
Lewis Roca Rothgerber Christie LLP
The economic crisis following covid-19 has pushed rights enforcement down company agendas, while unwary online consumers in lockdown make easy prey for counterfeiters. With litigation slow, costly and unlikely to succeed, there are quick and easy ways to thwart the fakers.