Analysis: Legal

Functionality in the European Union and the United States: converging worlds or diverging approaches?

The Long Read: The two key markets show no sign of reaching a consensus when it comes to assessing this vital aspect of trademark protection. Thankfully, Baker McKenzie’s Vlotina Liakatou, Dyan House and Karen Hays have set out a focused checklist for brand owners looking to protect their intangibles in both regions.

Functionality in the European Union and the United States: converging worlds or diverging approaches?
The trademark identity crisis: study calls for IP law rethink to “more accurately reflect our complicated reality”
5 May 2021

The trademark identity crisis: study calls for IP law rethink to “more accurately reflect our complicated reality”

Academic claims trademarks have shifted away from being identifiers of the producers of goods and services, and the ongoing “backlash against globalism” is rooted in “brands asserting their power in improper ways”.

From Apple to Nike: key recent decisions and developments from the Americas analysed
30 Apr 2021

From Apple to Nike: key recent decisions and developments from the Americas analysed

For our next instalment presenting recent Legal Updates that you may have missed we turn our attention to the Americas.


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7 May 2021

‘.ua’-DRP becomes applicable to new domain zones

The ‘.ua’ Domain Name Dispute Resolution Policy is now applicable to several Ukrainian district-specific third-level domain zones - including ‘’ and ‘’, the most popular Ukrainian regional domain zones. Read more

30 Apr 2021

Thailand introduces fast-track procedures for trademark examination and renewal

Thailand’s Department of Intellectual Property has introduced fast-track procedures that should enable businesses to implement their IP strategies with fewer delays and obstacles. Read more

26 Apr 2021

Growing backlog, falling morale: former USPTO examining attorney reveals impact of Chinese trademark applications

In an exclusive interview with WTR, a former examining attorney at the USPTO explains how the influx of trademark filings from China is impacting the registry, and reveals how “demoralisation has become a big issue for USPTO examiners”. Read more

22 Apr 2021

Best practice in brand ownership and tax reporting post-Coca-Cola

The Long Read: The Coca-Cola recipe may be the same, but the US Tax Court has ruled that the formula it was using to assign IP rights to subsidiaries is no good. Jonathan G Polak, Todd C Lady and Joseph Balthazor Jr unpick the case for practical tips on how other brands can avoid the same fate. Read more

21 Apr 2021

What the EU-China GI agreement means for rights holders

In this guest post, Susan Fan, senior trademark agent in the Rouse Shanghai office, reflects on the impact of the latest EU-China agreement on GIs and presents insight into local and international protection strategies. Read more

21 Apr 2021

USPTO struggles with backlog as number of Chinese trademark applications rises rapidly

The USPTO continues to be flooded with trademark applications from China, with users telling WTR about the changing strategies being adopted by Chinese filers and concerns that the registry has limited options to address the situation. Read more

16 Apr 2021

Changes to ‘.au’ domain name rules: implications for Australian trademark owners

New eligibility rules for holding a ‘.au’ domain name came into effect on 12 April 2021. It is particularly important for foreign entities holding ‘.au’ domain names to assess whether they will remain eligible. Read more

16 Apr 2021

“There may be chaotic situations”: the practical impact of abolishing India’s IPAB

In this guest analysis, Shailendra Bhandare, partner at Khaitan & Co, explores the short and long-term impact of the move to abolish India’s  IP Appellate Board. Read more

15 Apr 2021

“A matter of survival”: Trademark Express prevails in long-running dispute with LegalForce

A US district court has found in favour of Trademark Express in a long-running and bitter dispute with LegalForce RAPC Worldwide, deciding that the former had not been engaged in the unauthorised practice of law. ” Read more

14 Apr 2021

“This will be an impediment to India’s image”: concerns over costs and backlogs voiced after IPAB is abolished

Last week the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance 2021 was promulgated, effectively abolishing India’s IP Appellate Board and transferring its functions to the country’s commercial and high courts. Read more

12 Apr 2021

Trademarks after death – study urges IP practitioners to consider posthumous registration issues

A new study has taken a deep-dive into posthumous intellectual property and endorsement rights, and proposes a legal rethink to ensure fairness and accuracy to the departed. Read more

12 Apr 2021

Throwing shade at shadow companies - amendments to the Provisions on Administration of Enterprise Name Regulations

Compelling a shadow company to change its trade name used to be a costly and time-consuming exercise. However, several administrative measures have recently been introduced, marking a major improvement in the fight against shadow companies in China. Read more

9 Apr 2021

New measures to improve IP rights protection system - key points highlighted

A resolution issued by the Uzbek president earlier this year has introduced numerous changes in the IP field. Most importantly, all legal entities and individuals are now entitled to register trademarks and service marks. Read more

8 Apr 2021

New company law and recognition of well-known marks - what you need to know

Although Nigeria’s trademark law does not protect unregistered well-known trademarks against similar or identical company names, the owners of such marks may be able to rely on Section 852(1)(d) of the new Companies and Allied Matters Act 2020. Read more

7 Apr 2021

“Offensive trademark owners have an enforcement problem” – study calls for Brunetti rethink

A new study has analysed the impact of the Iancu v Brunetti Supreme Court decision, and argues that the owner of offensive trademarks can be denied enforcement in infringement actions and customs seizures. Read more

3 Apr 2021

Following in the footsteps of Michael Jordan, New Balance, Peppa Pig and Puma, expect more high-profile trademark decisions in China in the coming months

In our latest Saturday opinion column, we look at recent policy announcements and big decisions in China. Read more

1 Apr 2021

Practice tips for combatting counterfeiters: an action plan for brands, manufacturers and retailers

The long read: Anti-counterfeiting cannot be a spectator sport – it needs players all through the supply chain. Robert Masters, Lisa Martens and Katy Carlyle at Sheppard Mullin have drawn up a clear strategy for both first and second-line defence in the US market. Read more

30 Mar 2021

New procedure for the granting of GIs - what you need to know

This update highlights the main requirements that must be met in order to obtain GI protection in Venezuela pursuant to the new procedure established by the Trademark Office late last year. Read more

29 Mar 2021

Covid-19’s impact and amended Trademark Regulations - what you need to know

This update provides a brief overview of the effects of the covid-19 pandemic in Uganda and gives a peek into the recently amended Trademark (Amendment) Regulations 2021. Read more

27 Mar 2021

While the ‘mandatory versus voluntary’ debate continues, legislation on platform action over fake goods looms ever closer

In our latest Saturday opinion column, we reflect on the reintroduction of the US INFORM Consumers Act. Read more

25 Mar 2021

Staffing concerns and digital downgrades – Nigerian IP Office faces challenges in modernisation effort

Talking to WTR, a local trademark expert claims the Nigerian IP Office’s recently-launched new website has had key features removed and that ongoing staffing problems are impacting the registry’s administrative duties. Read more

24 Mar 2021

Innovation at the Hong Kong IP Office: spotlight on non-core tools and services

In exclusive insights, the Hong Kong IP Department reveals its innovative non-core tools and services for trademark users – and some of those planned for the future. Read more

24 Mar 2021

Renewal of overdue trademarks in Kenya - an update

As part of the Kenya Industrial Property Institute’s initiative to rid its Trademarks Register of all unwanted registrations, three special journals containing trademarks that were not timeously renewed have now been published. Read more

23 Mar 2021

How AI could impact trademarks and designs: UK government weighs in

Following a three-month consultation on IP and AI, the UK government has revealed some of the ways that AI is expected to play a role in trademark and design operations in the future. Read more

22 Mar 2021

“A strong message to governments”: INTA steps up anti-counterfeiting advocacy with new resolutions

The association characterises the resolutions, one of which seeks to close a longstanding legal loophole, as a “strong message to governments around the world that any form of counterfeiting should not be tolerated”. Read more

22 Mar 2021

New Supreme Court plenum resolution provides guidance on unfair competition issues

The Russian Supreme Court has adopted a new plenum resolution “On some issues arising from the application of the antitrust law by the courts”, which provides guidelines on the protection against unfair competition that will be of interest to IP rights owners. Read more

20 Mar 2021

Now the genie is out the bottle, expect IP enforcement to remain high on government agendas

In our latest Saturday opinion column, we reflect on recent collaborations between enforcement authorities, IP offices and rights holders. Read more

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