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

New 04 AUGUST 2022

IP Court clarifies criteria for assessing distinctive marks

The IP Court has overruled Rospatent with regard to the strength of visual elements of particular word marks, highlighting the subjective nature of assessment and the importance of visually distinctive branding.

30 JUNE 2022

Court rules on conflict between a trademark and an indication of origin arising from licence agreement

The IP Court has overruled Rospatent’s rejection of a trademark owner’s right to use their mark, RUSSIAN STEEL, for vodka. The court held that the alleged similarity of the trademark and an indication of origin constituted an unacceptably broad interpretation of the norm.

09 JUNE 2022

IP Court upholds refusal to undermine US mark

The IP Court has rejected an appeal by a Russian entrepreneur who argued that the similarity of their mark to one owned by US company Caterpillar Inc should not be taken into account following a government order on foreign states that commit unfriendly actions against Russia.

Poland

New 04 AUGUST 2022

Is it possible to register country names as trademarks?

After six years in wait, the EUIPO’s Grand Board is now examining an invalidation motion filed by the Icelandic Ministry for Foreign Affairs against the British supermarket chain Iceland.

28 JULY 2022

A rising football star’s identity trademark strategy

Robert Lewandowski has gained worldwide fame, however, intentionally or otherwise, he seems to have a decentralised IP strategy, not directly owning any registered marks related to his identity. Such an approach may lead to confusion and a lack of a cohesive action.

21 JULY 2022

Shortening IP proceedings deadlines may cause more harm than good

A proposal for a new act that will diverge Polish IP regulations from that of the wider European Union is being questioned by practitioners. The new act may have unintended consequences for brand owners, and possibly increase the number of oppositions.

India

27 JULY 2022

Supreme Court elevates copyright infringement to a serious non-bailable offence

New interpretation of copyright law makes infringement a cognisable, non-bailable offence for which an individual can be arrested. The effect of this strong ruling on creative freedom remains to be seen.

21 JULY 2022

Courts examine keyword advertising as trademark infringement

Indian courts are deciding whether using a registered trademark as a keyword on the Google Ads service amounts to use of a mark, and, if so, whether this provides an unfair advantage by misleading consumers.

07 JULY 2022

Spotlight on the right-to-repair movement and IP rights in India

The growing right-to-repair movement is demanding that manufacturers stop suppressing consumer and third-party repairs; however, manufacturers claim that this will force them to reveal proprietary technology and that poor-quality repairs will create brand dilution. Trends in India favour access to quality goods at free market prices.

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.

Taiwan

21 JULY 2022

Hashtags using trademarks deemed to be promotion, not infringement

The IPC Court has ruled that the use of another group’s registered trademarks as a hashtag on social media constitutes promotion and does not suggest sponsorship or endorsement, therefore is not likely to create confusion.

14 JULY 2022

Questions remain regarding the registration of trademarks in the metaverse

Nike is registering its marks in new classes to keep up with the evolving virtual trademark landscape, however it is unclear if and how Taiwan’s IP system will adapt to protect IP rights in the metaverse.

09 JUNE 2022

Amazon Technologies loses out on distinction between suggestive or descriptive

The IP and Commercial Court has upheld the Taiwan IP Office’s rejection of Amazon Technologies’ mark – an invented word that is simply the combination of two dictionary words – finding it descriptive rather than suggestive.

USA

14 JULY 2022

The Ohio State University wins trademark protection for THE

OSU’s years-long battle with the USPTO and Marc Jacobs has ended with the university overcoming arguments that the mark is merely ornamental, prompting the question of how the brand will use this to grow its already substantial licensing and trademark programme.

07 JULY 2022

Lessons from the first six months of the Trademark Modernisation Act

With more options for combating trademark registration for non-use comes greater potential for error. Fortunately we have some more guidance from the USPTO on best practices for success.

30 JUNE 2022

What the data says about the first six months of the Trademark Modernisation Act

Back in December 2021 the USPTO enacted the Trademark Modernisation Act. A deep dive into the numbers so far offer a fascinating insight into how this relatively new act is affecting the US trademark landscape.

Turkey

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.

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.

Scandinavia

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.

12 MAY 2022

Why Scandinavian companies have been quick to adopt NFTs

Vast sums of capital are being poured into IP protection in the NFT space, however, infringement is rife, the legislation is still vague and there is no formal dispute resolution process. The time is ripe for trademark-owning companies to incorporate NFTs into their existing IP and branding strategies.

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.

Western Balkans

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

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.

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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