WORLD TRADEMARK REVIEW Issue 85

On a tight budget: cost-cutting tips from the trademark front line

With many legal budgets set to be cut as a result of pandemic-related economic pressures, trademark experts share advice on ways to reduce spending in the months ahead.

Tim Lince

Features

“There’s no evidence that plain packaging reduces smoking”: exclusive interview with British American Tobacco’s head of trademarks

Roger Evans speaks out about how vaping products are transforming the market and maintains that plain packaging may not be the best solution to tackle health concerns.

Repairing reputational damage: how cross-collaboration helps the Wells Fargo trademark team

With a portfolio of valuable financial brands to protect and a position of trust to safeguard, the IP group at Wells argo provides an object lesson in how full integration can pay dividends.

Making the US trademark system more accessible to Black business owners

Supporting Black-owned businesses is a crucial part of dismantling structural inequalities – and quality trademark advice is a key component of this. But with reports of a significant disconnect between minority business owners and the trademark system, much work remains.

Flying high: registry data shows Asia-Pacific filings are skyrocketing

Filing data at the top Asia-Pacific IP offices reveals a region undergoing spectacular growth, accounting for a colossal 80% of trademark activity worldwide last year. Spearheading the effort is China – a nation with increasing influence over its neighbours, which shows no signs of slowing down.

How Tesla’s brand is built on the allure of Elon Musk

The electric vehicle manufacturer’s market value continues to climb – and so does its brand value. Investors and consumers alike appear fascinated by the company’s quasi- influencer CEO.

Top disruptors prioritise trademarks from the start

Fresh data suggests that the start-ups that go on to shake up the industry landscape tend to chart a different course to the norm when it comes to IP filing.

The state of the non-legal trademark services market: users have their say

The non-legal trademark services sector has experienced a series of big ticket acquisitions. World Trademark Review polled users to find out whether, against this backdrop, search, watch and trademark management service providers are meeting user needs.

ICANN’s upcoming UDRP review – opportunities and risks for brand owners

As ICANN’s review of the UDRP nears, brand owners need to get involved and have their say to ensure that anti-IP voices do not have a disproportionate effect on the process.

The impact of covid-19 on intellectual property and the digital landscape

With online shopping and communication booming, the role of e-commerce companies is coming under greater scrutiny. The global pandemic could provide an opportunity to transform the ways in which they are regulated.

To catch a thief: how Hitchcock and AI can inspire brand owners to combat online piracy

Brand owners must think like today’s tech-savvy brand pirates in order to take them down – especially as counterfeiting rates have soared during the covid-19 crisis. Positively, there are a range of strategies they can adopt to do so.

A tale of cigarettes and alcohol: CJEU offers oasis for trademark owners

The Court of Justice for the European Union has shed further light on how far individuals can be held liable for the import of infringing goods, providing rights holders with a fresh weapon in the war against counterfeiting.

The Madrid Protocol in Indonesia: what you need to know

Indonesia’s membership in the Madrid Protocol has had a noticeable impact on several aspects of daily practice and on the IP office itself, with a number of important developments for trademark professionals to note.

Decoding the Chinese legal market: what do clients want and whom do they prefer?

With fierce rivalry between domestic and foreign outfits, as well as different types of law firm and agency entities, choosing a partner in China can be a daunting prospect. World Trademark Review gathers exclusive client feedback to assess who is coming out ahead – and why.

Federal Circuit reveals a more colourful future for trademarks (for now)

A recent decision has created a new rule that colour marks used on product packaging can be inherently distinctive, although the bar is likely to be high.

Then and now: assessing Canadian practice one year into the new regime

With significant changes to the Canadian trademark system taking effect last year, analysis of the landscape 12 months on reveals some important emerging nuances in practice.

Island hopping in the Caribbean: the latest developments across a complex region

With no unified trademark system and a rich landscape of languages and practices, the Caribbean is a highly nuanced terrain with some potential pitfalls that brand owners and practitioners must navigate.

Brexit negotiations and covid-19: United Kingdom defeats the odds

The first week of July was the busiest the UK Intellectual Property Office has ever seen, putting to rest any fears that ongoing Brexit negotiations and the coronavirus pandemic might have lasting effects on application levels.

A year of change and growth at the Japan Patent Office

The past 12 months have been challenging for all national IP offices, but the Japanese registry has overcome major hurdles while seeing a rise in trademark filings and implementing significant changes.

Columns

Saudi Arabia: Building for the future

The Saudi Authority for Intellectual Property has become the new sole authority for all IP matters as part of plans to transform the kingdom’s economy.

Co-published

New approaches to an old problem: the evolution of online brand protection

Brand experts consider the latest strategies for online brand protection and discuss how to evidence return on investment in such efforts.

Country correspondent

Getting creative: when to protect trade dress under trademark or competition law

China
Kangxin Partners PC
In the absence of trade dress-specific legislation, rights holders in China must manoeuvre around the Trademark Law and the Anti-unfair Competition Law if they are to protect their unique designs effectively.

Copyright’s revenge on designs: Italian Supreme Court applies CJEU Cofemel ruling

European Union
Bugnion SpA
An Italian Supreme Court decision concerning the layout of Kiko make-up stores is a welcome sign of the harmonising effect of the Court of Justice of the European Union’s Cofemel ruling, but could open the door to the protection of 3D designs with little originality or that are mainly functional.

The pros and cons of industrial designs, trademarks and trade dress

Mexico
Uhthoff, Gómez Vega & Uhthoff
Having a distinct look is the best way for a product to stand out from the competition, but as Mexico awaits further guidance on new trade dress provisions, how should brand owners choose the right protection for their designs?

Against the odds: the fundamentals of design protection in Turkey

Turkey
Kenaroğlu Avukatlik Burosu
Although registered and unregistered designs enjoy various forms of protection in Turkey, in practice, the hurdles to obtain such rights can be difficult to overcome, meaning manufacturers – especially in the spare parts industry – should consider alternative solutions.

How to determine the best form of protection for a product’s appearance

United States of America
Lewis Roca Rothgerber Christie LLP
Trade dress may be the go-to choice for protecting a product’s appearance or configuration, but other IP rights have plenty to offer.