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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Poland

New 13 JANUARY 2022

Quality no longer affects assessment of trademark recognition in Polish courts

A Supreme Administrative Court decision has finally brought Polish practice for judging recognition of trademarks in line with EU standards by disassociating perceived product quality from brand recognition.

16 DECEMBER 2021

Polish IP office launches authenticity verification tool in fight against fraudsters

Following a wave of scams targeted at trademark owners, the office has introduced a digital verification tool to prevent trademark owners falling prey to fraudulent invoices and correspondence.

26 AUGUST 2021

New bill to replace decades old industrial property law in Poland

A new bill is set to replace the 20-year-old Polish Industrial Property Act. The old and much amended law has been criticised for creating interpretational doubts. The new bill claims that it will be more friendly to entrepreneurs by speeding up the very formal registration process.

Mexico

New 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.

04 NOVEMBER 2021

Rights holders succeed in changing Mexican legislation on certification marks

Trademark owners and local IP associations have successfully lobbied the government to change rules that made certification marks vulnerable to non-use cancellation actions, thus protecting consumers and bringing Mexico into line with other major jurisdictions.

Taiwan

New 13 JANUARY 2022

The relationship between retail services and identified goods on trademark applications

The emergence of e-commerce, in which a wide range of goods are readily accessible, is leading to increasing overlap between the sales channels and target consumers of goods or services designated by different marks.

02 DECEMBER 2021

How pandemic driven non-use could affect trademark cancellations

Covid-19 lockdowns have forced some businesses to stop using their trademarks. While there is no word from Taiwan’s government on how this may affect non-use cancellations, owners can take pre-emptive steps to keep their marks valid.

29 SEPTEMBER 2021

IPC Court questions whether advertising services provided outside Taiwan qualifies as trademark use

In a case currently before the Supreme Administrative Court, a registered trademark that was advertised in Taiwan could be vulnerable to non-use cancellation in the absence of any actual business transaction. Such a finding could have far-reaching consequences for trademark owners that offer their services offered outside of Taiwan.

Africa

New 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.

USA

New 13 JANUARY 2022

Nike and Converse reach settlement with former employee in custom-shoe case

An ex-Nike employee has reached a settlement with the shoe giant over his practice of customising genuine branded shoes to produce trademark-melding creations. Intriguingly, the proposed judgment indicates that the defendant may continue his customisation services – although only pursuant to the terms of the agreement.

16 DECEMBER 2021

Federal Circuit reverses TTAB decision on MONEY MART cancellation

The US Court of Appeals for the Federal Circuit has held that a registrant does not have priority to a specific service that it was second to offer, simply because it was the first to offer a different specific service that is a species of a genus that covers both specific services.

09 DECEMBER 2021

Novel cryptocurrency ‘JRR Token’ ruled to be infringing

An attempted fantasy parody defence of a domain name associated with a cryptocurrency coin clearly derivative of The Lord of the Rings series showcases why defences based on parody are exceedingly weak in this commercial context and why would-be users of others’ marks should seek licensing arrangements rather than simply use and hope for the best.

UK

16 DECEMBER 2021

A stealthy avoidance of summary judgment at the UK High Court

An application for summary judgment over a trademark infringement claim has failed on the basis that further information and evidence would be materially beneficial to the court. The case involved two entities launching similar products under similar brand names – an increasingly common scenario.

09 DECEMBER 2021

Oatly misses ‘oat’ on victory in UK trademark battle against PureOaty

Oatly’s loss to rival oat drink brand, PureOaty, demonstrates the limitations of trademark law in preventing competition from rival brands, and highlights the difficulties brand owners can face when trying to enforce marks containing descriptive elements.

18 NOVEMBER 2021

United Kingdom begins work on new post-Brexit exhaustion regime

As rights holders wait for an official response to the government’s consultation on the future of the United Kingdom’s exhaustion regime, a close analysis of the current situation offers valuable insight into this fraught area.

Russia

09 DECEMBER 2021

How the Constitutional Court has tried to shine light on parallel imports and exhaustion

Resolution 8-P tackles the thorny issue of parallel imports and attempts to provide guidance on why they should not be treated in the same way as counterfeit products.

02 DECEMBER 2021

How Russian courts handle trademark exhaustion

The exhaustion of trademark rights is a murky area. While courts have issued diverse rulings on this subject based on nuances in particular cases, a closer examination of some of these does provide some guidance.

25 NOVEMBER 2021

Case law precedents offer useful guidance for trademark disputes

In Russian trademark law, the first-to-file principle officially gives priority to a mark that has been registered over one that has been used, however, in practice prior use can win out. A closer examination of past cases offers some clarity.

Western Balkans

25 NOVEMBER 2021

When refiling is a better option than renewing

There are valuable strategic benefits to refiling a trademark that has gone unused instead of renewing it - particularly in Serbia and Kosovo - with avoiding cancellation due to non-use being just one.

28 OCTOBER 2021

Key knowledge for filing oppositions in the Balkans

While oppositions are a crucial tool throughout the Balkans, local knowledge of everything from proof of use, lack of response, relative grounds, hearings and appeals processes, is critical for trademark filing success.

23 SEPTEMBER 2021

Seven rules for overcoming provisional refusal based on relative grounds in Serbia

In February 2020 Serbian IP regulations overhauled its opposition system, however the Serbian IP Office may still examine new applications for relative grounds for refusal. These seven tips will help trademark owners unfamiliar with the system to avoid provisional refusals and therefore save time and expense.

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.

Domain name policing and enforcement

11 NOVEMBER 2021

UDRP first element: one letter difference, but not confusingly similar

While a difference of one letter between a trademark and a domain name is often considered to qualify as ‘confusingly similar’, closer analysis of exceptions to this principle provides valuable illumination to rights holders.

07 OCTOBER 2021

How to defend against opportunists in the arena of personal names and unregistered rights

Emma Raducanu’s historic win at the US Open has prompted a flood of domain name registrations attempting to capitalise on her name. The UDRP does not explicitly provide standing for unregistered personal names, however, there are proven ways to protect oneself against opportunists.

23 SEPTEMBER 2021

Recent UDRP cases reveal trademark applications are being targeted by cybersquatters

A recent trend of cybersquatting by one individual showcases the need to coordinate domain name registrations alongside trademark applications and the importance of understanding the UDRP’s stance on opportunism.

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.

Turkey

03 JUNE 2021

No contribution to the invention? No utility model protection in Turkey – the rules explained

Utility model protection is an attractive option for inventions with obvious technical solutions. However, applicants must be aware that both non-technical features and technical features without a technical effect will be excluded from the novelty assessment.

05 NOVEMBER 2020

Recent access block to non-party oppositions in accordance with Turkish Personal Data Protection Law

The new Personal Data Protection Law has blocked public access to Turkish Patent and Trademark Office opposition petitions and created a new requirement for applicants to hire a local Turkish representative for international registrations.

04 JUNE 2020

Covid-19 update – suspension of legal terms in court proceedings and compulsory official filings in Turkey

A rundown of the latest coronavirus-related news in the Turkish IP sphere.

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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