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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New 21 SEPTEMBER 2023

China Bistro clarifies principles of trademark similarity and disclaimers

The Delhi High Court has found that phonetic similarity trumps visual dissimilarity in a trademark infringement case between food industry rivals. While the defendant Wow Momo Foods is defeated in this instance, the main suit is still ongoing.


How to navigate 'hush' branding disputes

In the somewhat taboo realm of menstrual hygiene products, a trademark dispute illuminates the convergence of statutory rights and social mores and the crucial role that courts can play in resolving matters where such competing needs collide.


Google keyword ruling indicates evolving trademark jurisprudence in digital realm

The Delhi High Court has ruled that since Google monetises its keyword suggestion tool, its use of trademarks as keywords constitutes advertising under the Trademarks Act. It also compromises its claim to safe-harbour immunity, which is offered to intermediaries under the Information Technology Act.


New 21 SEPTEMBER 2023

Appeal court finds prior settlement does not impact future trademark licensees

The 11th Circuit has allowed a trademark licensee to bring a claim for unfair competition, despite a lack of authorisation in the licensing agreement. The court held that a previous agreement not to sue did not restrict the future licensees’ ability to take legal action against one another.


Nothing lost in translation: book’s Spanish version is not a different creative work

Douglas Wood’s bid to register the titles of his English life guide and its Spanish translation has been rejected by the TTAB. The board maintained that the book and its translation were versions of the same work, not a series – and thus ineligible for trademark protection.


Fourth Circuit affirms that disgorgement of profits is an appropriate remedy for breach of contract

Addressing the breach of a confidential settlement agreement, the Fourth Circuit has upheld a district court’s summary judgment rulings in a real estate trademark dispute, agreeing on all six likelihood-of-confusion factors.



Lamborghini and Novartis prove effectiveness of invalidation and opposition proceedings to combat trademark squatting

In its attempts to crack down on malicious trademark registration, the CNIPA is applying Article 44(1) of the Trademark Law. In many cases, however, it is difficult to prove confusion among the relevant public.


CNIPA cracks down on malicious registration using Article 4 of the Trademark Law

Trademark squatting is posing a sizeable challenge for genuine mark owners. The CNIPA is taking several measures to tackle the practice, including by strengthening the examination process.

27 JULY 2023

Online filing of trademark registrations soars in popularity

Increased accessibility, streamlined procedures, lower costs, comprehensive information and global reach that online registration platforms offer are drawing the attention and use of Chinese applicants, establishing these platforms as the preferred avenue.

Western Balkans


Slovenian legislative overhaul reflects valuable steps towards harmonisation with EU IP framework

Amendments to the Slovenian Industrial Property Act signal that Slovenia is keen to modernise its legislation to keep up with digital trends. Other changes address extension-of-time requests and cancellation procedures, among many others.

06 JULY 2023

Montenegro aligns its trademark regime with EU standards

The Balkan country has amended and modernised its national trademark law, harmonising new IP regulations with EU norms with regard to registration, opposition and protection.

22 JUNE 2023

Key differences between trademark regimes in Albania and Kosovo

While the trademark regimes of these neighbouring Balkan jurisdictions share certain key features, they also have crucial differences that international brand owners should have firmly on their radars.


31 AUGUST 2023

Turkish government increases fees and VAT rates for IP services

Companies and foreign rights holders must review their budgets and financial strategies to effectively accommodate changes to official fees and VAT rates. Adapting to these revised increases will help businesses to ensure compliance and avoid any potential penalties.

29 JUNE 2023

TURKPATENT sheds a new light on ‘immaterial details’ following syringe design appeal

In reversing its initial rejection of a syringe design, TURKPATENT has signalled a new approach to assessing design novelty. The decision shines a spotlight on the complexity of immaterial details and the importance of defining them due to their potential impact on a design’s identity and expression.

18 MAY 2023

Supreme Court disregards tradition of cumulative protection for trademarks in pharmaceutical case

The Supreme Court’s momentous ruling on a dispute over a pharmaceutical trademark disregards the cumulative protection for marks established in previous legislation, separating protection from unfair competition provisions and eschewing well-worn precedent.


24 AUGUST 2023

Alternative methods to curb trademark squatting amid post-registration opposition abolition

A draft amendment to Taiwan’s Trademark Act is set to replace the post-registration opposition system with invalidation proceedings. It will introduce a trial and appeal board and will allow third parties to submit observations during the pre-registration examination process.

13 JULY 2023

Amended good-faith prior use clause could threaten predictability in trademark suits

An amendment to Taiwan’s Trademark Law will muddy the scope of protection provided by good-faith prior use. This may make it more difficult for defendants to argue legitimate use of marks and for courts to assess infringement.

11 MAY 2023

Wide-ranging draft amendment looks set to reshape trademark landscape

The recently passed draft aims to modernise the Taiwanese trademark regime, shaking up pre-existing policies with regard to applications, reviews, oppositions, cancellations and Customs proceedings.


15 JUNE 2023

Danish practice to align with EUIPO on following GI conflict over Scotch Whisky

A dispute involving the GI Scotch Whisky has led to a more harmonised approach between the DKPTO and EUIPO. It also highlights that consumer surveys are a powerful tool when evidence of public perception is required.

13 APRIL 2023

How evolving regulations are affecting trademark registrations related to NFTS and virtual goods and services in 2023

The publishing of the latest edition of the Nice Classification on 1 January 2023 provides clarity for applicants by highlighting disparities among the Scandinavian approaches to navigating trademark registration in digital marketplaces.

23 FEBRUARY 2023

Pressure mounts to register black and white marks before adoption of new Trademarks Act

With Norway set to end its tradition of protecting black and white versions of figurative trademarks from March, trademark owners and brands hoping to register must quickly assess the spectrum of colour protection their mark needs.


20 APRIL 2023

Key amendments to Civil Code of Procedure alter interim injunction proceedings in trademark cases

Amendments accepted in March officially codify a mix of new and previously existing practices of Polish IP courts into law, affecting rights holders at each stage of interim injunction proceedings.

23 FEBRUARY 2023

McDonald’s reversal shines spotlight on proving genuine use in Poland

The EUIPO’s seismic cancellation – and eventual reinstatement upon appeal – of a McDonald’s registered mark highlights issues with Poland’s rules for proving genuine use.

02 FEBRUARY 2023

Patent Office’s e-platform is a hit with target audience

Three years since its debut, analysis of user rates clearly shows that the electronic services platform – a pivotal part of the office’s push for digitisation – continues to develop and help resolve users’ IP issues.


16 FEBRUARY 2023

How trademark use requirements influence permissible brand evolutions

To ensure the viability of their brand’s evolving intellectual property, it is crucial that Swiss trademark owners understand and comply with proper use guidelines regulating any changes to existing marks.

26 JANUARY 2023

How to protect trademarks against non-use effects in Switzerland

Understanding Switzerland’s particular trademark use requirements is crucial for rights holders developing their protection and defence strategies and for applicants hoping to secure their marks.

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.


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.


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.

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