Market Insight

Updates from an international team of correspondents who report on recent developments in trademark law and practice in their home jurisdictions, as well as strategic issues and those relating to brand protection, portfolio management and value creation.

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Russia

17 NOVEMBER 2022

Russian IP courts ban ‘ros’ prefix in company name

Company names in Russia are prohibited from including the full or abbreviated names of official government bodies. Now three courts have unanimously agreed that the ‘ros’ element of company ROS-PRAVO’s name could mislead consumers.

06 OCTOBER 2022

Russian IP Court upholds finding of confusion in product mixing case

Russia’s specialist IP court has finally resolved a case involving the issue of confusion when different products are introduced into circulation together. The decision provides welcome clarity in this contradictory area.

22 SEPTEMBER 2022

IP Court overrules Rospatent’s finding of similarity for marks in different classes

A fresh finding from the Presidium of the IP Court on similarity between marks may affect Rospatent’s registration practice, since the office has recently tightened the requirements for uniformity at the examination stage.

Turkey

10 NOVEMBER 2022

Turkish trademark office indicates it will begin accepting cancellation requests from 2024

With 13 months to go, excitement is brewing around the long-awaited implementation of a 2017 proposal for cancellation requests to be heard centrally at the Turkish Patent and Trademark Office instead of at the local level.

14 JULY 2022

TÜRKPATENT now a participating office in WIPO’s Digital Access Service

At the request of applicants, trademark filers in Turkey will be saved from tedious admin work as the country’s IP office can now exchange priority documents electronically with other participating offices.

07 JULY 2022

Netflix animated ident logo becomes the first multimedia mark to be registered in Turkey

IP legislation that came into effect in 2017 broadened the criteria for aspects of signs that can be registered as trademarks. With Turkey’s IP office leading the way by recently granting non-conventional marks to Netflix, multimedia marks are expected to feature widely in the country’s IP landscape.

India

10 NOVEMBER 2022

“Food, glorious food”: cooking up trademark rights in India

No law currently outlines protection of culinary intellectual property in India, so restaurants and chefs must instead rely on two palatable alternatives to enforce their IP rights.

13 OCTOBER 2022

Delhi High Court finds KHADI and charkha logo marks to be well known

Over the last few months the Khadi & Village Industries Commission has won multiple successes before the Delhi High Court enforcing its rights to the KHADI mark, including an award of Rs1 million and costs of Rs200,000 following an infringement claim.

15 SEPTEMBER 2022

E-commerce platform’s suggested-seller function leads to finding of passing off

An online seller has scored an important point against a major Indian e-commerce site before the Delhi High Court. The site has a function that suggests users visit other sellers’ pages, which, in this case, promoted the products of unrelated third-party sellers that were taking advantage of the plaintiff’s brand.

Scandinavia

10 NOVEMBER 2022

Legislators propose targeting commercial image manipulation in Denmark

Entertainment, marketing and brand management professionals are bracing for impact as legislators propose full disclosure of photo enhancement for commercial use.

01 SEPTEMBER 2022

Commercial use of copyrights and the impact of working relationships on licensing negotiations

Compensation for alleged unauthorised use and sublicensing to third parties without compensation to the rights holder creates IP conundrum.

09 JUNE 2022

Scandinavian music streaming success is losing out to NFT sales

Musicians are increasingly entering the metaverse to distribute their work, using NFTs as the vehicle for doing so. With huge money involved, the music industry may be at the forefront of a new era, and IP and entertainment lawyers will need to be on their toes.

Poland

03 NOVEMBER 2022

Appeal court clarifies when to seek an expert witness in litigation

A recent case has sparked debate about when to request the opinion of an expert witness to help assess the risk of confusion. Some argue that this undermines the judge and prolongs cases, while others insist that it provides necessary insight.

06 OCTOBER 2022

Warning shot fired over document quality in trademark submissions

In a new drive for improved standards, the Polish Patent Office has written to IP attorneys to highlight the fact that much documentation submitted to it is of poor visual quality. This is not only troublesome for examiners but can affect the outcome of a case.

29 SEPTEMBER 2022

Allegro’s controversial bid for a single-colour mark

There are a limited number of colours available for registration and single-colour marks are hard won in Poland. A recent application by a popular e-commerce site illustrates the obstacles in the way – and potential rewards – of obtaining such registrations.

Western Balkans

27 OCTOBER 2022

Striking the balance between consumer protection and IP rights

The Serbian IP Office currently takes a strong position on similar marks, disallowing letters of consent, even though the law is unclear on this point. This stance has created a challenging environment for trademark owners while providing little extra benefit for consumers.

06 OCTOBER 2022

Top tips for registering colour marks in Serbia

Whereas trademarks consisting of multiple colours are relatively easy to register, single-colour marks may only acquire distinctiveness through use. Serious and long-term use needs to precede such an application in order for it to be successful.

10 FEBRUARY 2022

How to mitigate undue seizure risk when shipping marked goods to the Balkans

An annual Customs surveillance petition for trademark owners can offer various benefits for trademark owners shipping goods across international borders

Taiwan

20 OCTOBER 2022

Supreme Court rules against trademark squatting and abuse

A fresh case from the Taiwan Supreme Court addresses the issue of how one should defend against a trademark squatter in an infringement suit where the bad-faith registration has become incontestable and the mark at issue is not famous.

06 OCTOBER 2022

Ad featuring third-party mark on the aftermarket ruled fair use

Selling consumable spare parts bearing a third-party mark on the aftermarket has been held to be nominative fair use by the IPC Court, so long as it is clear that the item is not produced by the original manufacturer.

15 SEPTEMBER 2022

Taiwan IP Office updates examination guidelines for the digital age

New amendments by the Taiwanese IP Office to guidelines on distinctiveness gives brand owners a much greater scope of protection. The changes cover characters, foreign words and compound words, slogans, and shapes and devices of goods or services.

USA

29 SEPTEMBER 2022

Intent to sell does not equate to intent to use

The TTAB has issued a strong ruling against a trademark owner who failed to provide convincing evidence of use over the past nine years. The result is an affirmation of the Trademark Act and the fight against trademark trafficking.

22 SEPTEMBER 2022

Failure to record trademark assignment supports dismissal

A written trademark assignment agreement presented as evidence of intent has been deemed insufficient to demonstrate ownership, leading to the dismissal of a coffee company’s infringement claim.

15 SEPTEMBER 2022

Superior common law rights in South Carolina defeat infringement claims

A district court has held that one sale made two years before applying for federal trademark protection ― with no targeted marketing or promotion in South Carolina during that period ― is insufficient to establish superior common law trademark rights.

Domain name policing and enforcement

21 JULY 2022

The limits of the UDRP in trademark and commercial disputes

Many cases are being dismissed by UDRP panels on the basis that they exceed the scope of the panel. Looking at examples of such cases can give brand owners critical insights into how to avoid such issues.

09 JUNE 2022

How strong trademarks such as NIKE and MARLBORO can fail in cybersquatting cases

Past cases warn would-be complainants of the need to conduct a thorough investigation into a domain name registrant’s motives before filing a UDRP complaint. Where a registrant holds a domain for its generic value, rights holders are unlikely to succeed even if they have strong marks.

26 MAY 2022

How generic word marks can prevail in cybersquatting cases

A case involving the generic term ‘polka dot’ demonstrates how brand owners can still recover generic domain names when registrants use them in a manner that directly relates to their trademark.

Belgium

31 MARCH 2022

More than a wine label when prestige is at stake

When a trademark achieves a reputation, owners can claim broader protection on goods and services not designated by their original registration. However, such brands also attract counterfeiters, which as the recent infringement of the PETUS mark shows, can damage reputation.

Mexico

27 JANUARY 2022

How to protect NFT patents in Mexico

The phenomena of NFTs has created a stir in the patent and trademark world, and now Mexican legislation is having to play catch-up with EPO policy. Consequently, it is vital to have some local knowledge when it comes to protecting NFT patents in Mexico.

13 JANUARY 2022

Fresh case may force IMPI to reconsider stance on e-signatures

A decision from the Circuit Court of Appeals may prompt a re-evaluation on how e-signatures – the use of which has seen a significant uptick due to lockdowns and remote working – are accepted in assignment agreements and other trademark contracts.

11 NOVEMBER 2021

How to prevent trademark rights lapsing under new law

A new law obliges trademark owners to submit a declaration of actual and effective use if they are not to risk losing their rights to trademark registrations.

Africa

13 JANUARY 2022

Figures reveal early pandemic rush for covid-related trademarks

Trademark registrations in early 2020 on the small island state of Cape Verde reflects the seismic shift created by coronavirus for IP teams at large pharmaceutical groups.

25 NOVEMBER 2021

The sugarloaf pineapple: GIs as a development tool in action

Benin, Africa, has registered its first protected geographical indication, the result of much planning and collaboration by the national government, the European Union and the French Development Agency. It is hoped that the move will boost economic growth and preserve agricultural heritage.

18 NOVEMBER 2021

How the military coup in Sudan affects trademark rights

Government services related to intellectual property appear unaffected by last month’s military action by the Sudanese military but it remains to be seen how long this remains the case.

Germany

18 NOVEMBER 2021

Supreme Court sheds light on influencer advertising ahead of new Unfair Competition Act

The German Federal Supreme Court has handed down three parallel decisions on social-media influencers using their Instagram pages to advertise third-party products. The decisions are likely to be applicable even after issue-related amendments to the Unfair Competition Act come into force in May 2022.

07 OCTOBER 2021

GENGHIS KHAN decision highlights importance of industry peculiarities to unregistered company rights

30 SEPTEMBER 2021

Oktoberfest – how a local festival became a world-famous brand

While this year’s Oktoberfest has again been cancelled due to the still ongoing global pandemic, we take a deep dive into how it is managed from a trademark perspective, including the protection of beer as a protected geographical indication.

Switzerland

21 OCTOBER 2021

Swiss authorities relax examination practices for trademarks featuring a place name

With exceptions, it will no longer be a prerequisite to limit goods and services to their geographical origin for trademarks containing an indication of source. The Swiss Federal Institute of Intellectual Property appears to be becoming more flexible, aligning its approach with that of the European Union.

14 OCTOBER 2021

Trademark use requirements in Switzerland – what you need to know

The Swiss legislative landscape is strict when it comes to trademark use. Trademark owners can learn valuable lessons for putting together a protection strategy from past cases; use is at the heart of this, however this is complemented by specific knowledge of the jurisdiction, regarding territory, grace periods and partial use.

19 AUGUST 2021

The Swiss response to the concerning issue of counterfeiting

Recent reports reveal the damage of counterfeiting to Switzerland’s largest industries. Companies, government bodies and non-profits are all taking action, utilising AI, blockchain, legislation and education to fight this illicit activity.

China

02 SEPTEMBER 2021

Why three-year non-use cancellations have been hit so hard by evidence forgery

In a recent decision cancelling a registered trademark, a registrant forged invoices forming a chain of false evidence in an attempt to maintain ownership of a mark. The case highlights that forgery is relatively common in three-year non-use cancellation, with the costs low and inspection by authorities difficult.

22 JULY 2021

How to empower Chinese customs authorities

In the third and final instalment of a series on vital lessons to strengthen brand protection in China, we look at the General Administration of Customs’ new training programme.

15 JULY 2021

How to detect and capture infringing goods in China

In the second instalment of this series on effective brand protection strategies, we examine the different types of action that can be requested to monitor and seize counterfeit products.

Canada

03 JUNE 2021

The burdens of popularity – Canadian examination times and new office practices

The first of a two-part article examining the Canadian Intellectual Property Office’s latest steps to address its ongoing backlog of applications examines recent practice notices aimed at increasing the speed and efficiency of domestic application examination.

19 NOVEMBER 2020

Bricks and mortar or is online in order? Federal Court of Appeal checks in to trademark use and hotel services

The Federal Court of Appeal has handed down its decision in Miller Thomson v Hilton Worldwide Holding LLP, which relates to a non-use cancellation proceeding against the WALDORF-ASTORIA mark. The decision helps clarify what it means to provide hotel and motel services in Canada.

12 NOVEMBER 2020

EMPOWER-ing trademark infringement claims against public authorities

A recent case demonstrates that public authorities can be held liable for trademark infringement, even where they have obtained protection for an official mark.

The digitisation of IP management

03 JUNE 2021

Mining for trademarks: how multilingual portmanteaux and the F-word could unlock untapped markets

A surge in US trademark registrations has led to an overcrowded register. With many applicants having to think outside the box, multilingual terms and ‘bad words’ could reach new, younger markets.

01 APRIL 2021

How using the latest technology can solve issues facing most licensors, licensees and agents today

After participating in a WTR Connect masterclass on licensing and commercialisation in the covid-19 environment, Brainbase reflects on the use of technology in spearheading a company’s survival.

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