Asia-Pacific

Why 2021 could be the year China’s trademark volume starts to decline

A decade of explosive growth has greatly altered the country’s IP and brand ecosystems, but preliminary numbers indicate negative growth is a very real possibility this year

Why 2021 could be the year China’s trademark volume starts to decline
Online marketplaces in Vietnam that should be on counterfeit enforcement radars
15 Sep 2021

Online marketplaces in Vietnam that should be on counterfeit enforcement radars

In the next instalment in our regular series identifying the digital marketplaces that brand owners should monitor as part of their global anti-counterfeiting efforts, we head to Vietnam.

USPTO trademarks on sale as NFTs; thousands of duplicate filings in China; Australia joins DesignView – news digest
14 Sep 2021

USPTO trademarks on sale as NFTs; thousands of duplicate filings in China; Australia joins DesignView – news digest

In our latest round-up, we look at Nordstrom trimming its private portfolio to strengthen brands, Firefly becoming the North America licensing agency for Pan Am, and much more.

Latest

View all
17 Sep 2021

Applications to register names of Chinese Olympic champions rejected ex officio

The Chinese Olympic Committee recently publicly reprimanded trademark squatters for attempting to register the personal names of Chinese Olympic champions. Spurred by the committee’s comments, the CNIPA rejected ex officio a large number of trademark applications for the names of Chinese athletes. Read more

16 Sep 2021

Partial design applications becoming more popular in South Korea

The steady increase in applications over the past 10 years (particularly by major domestic and foreign companies) suggests that the partial design system has been a useful tool for companies seeking to strengthen their design competitiveness. Read more

14 Sep 2021

Caterpillar v Puma: battle of the big cats

The Federal Court of Australia has refused the registration of sporting company Puma’s PROCAT mark, concluding that its use would be likely to cause confusion with heavy equipment manufacturer Caterpillar’s CAT mark. Read more

14 Sep 2021

New measures for e-commerce supervision come into force

The Measures for the Supervision and Administration of Online Transactions have recently come into effect in China, strengthening the pressure against operators of infringing online stores. Read more

Anti-Counterfeiting

View all
8 Sep 2021

Kazakhstan to introduce mandatory digital labelling of footwear

The mandatory digital labelling of footwear is to be introduced in Kazakhstan on 1 November 2021 in a bid to minimise the presence of counterfeit footwear in the country, which currently makes up 48.5% of the local footwear market. Read more

6 Sep 2021

Online marketplaces in China that should be on counterfeit enforcement radars

In the latest instalment in our regular series on the digital marketplaces that brand owners should monitor as part of their global anti-counterfeiting efforts, we head to arguably the world’s main focal point for fake goods: China. Read more

2 Sep 2021

China moves to increase pressure on e-commerce platforms, threatening to revoke business licences for IP violations

China’s SAMR has announced its intention to amend the country’s E-commerce Law, threatening to revoke the licences of platforms that fail to take proper action against counterfeiters. Read more

31 Aug 2021

Mariah Carey trademark dispute; Mars Wrigley signs deal with Brand Central; Nigeria counterfeits update – news digest

In our latest round-up, we look at China seeking comments on a new judgement standard, the Ayla trademark dispute being revived by the Ninth Circuit, the Costa Rica IP office aligning with CP6, and more. Read more

Brand management

View all
10 Sep 2021

Marvel always possessed the ‘House of Ideas’, but it had to learn how to unleash its IP

A major strategy shift in the early 2000s resulted in increased licensing engagement, and the company has continued to be proactive in brand monetisation since, to great success. Read more

9 Sep 2021

Live updates: IP offices implement measures in wake of coronavirus crisis

As the novel coronavirus epidemic continues to spread across the globe, WTR provides an updated look at measures that national IP offices have launched in response. Read more

27 Aug 2021

Delta Airlines’ delta variant dilemma; Amazon launches IP Accelerator in Singapore; EUIPO e-sports webinar– news digest

In our latest round-up, we look at Walmart announcing a new initiative to help brand advertising, a Ferrero Rocher counterfeiter being found guilty of infringement despite handling authentic goods, and much more. Read more

24 Aug 2021

IPOS unveils new IP resources; THE trademark battle paused; Sony goes on PlayStation filing spree – news digest

In our latest round-up, we look at the EUIPO releasing a new design examination tool, a Supreme counterfeiter expanding on their production process, the staggering cost to get information on trademark scams, and much more. Read more

Enforcement and Litigation

View all
9 Sep 2021

WICKED v WICKED SISTER: Full Court confirms no statutory infringement by a party that has not used, but has authorised use of, a trademark

Australia’s Full Federal Court has confirmed that a trademark owner that merely authorises use of its trademark cannot be subject to liability for direct trademark infringement. Read more

7 Sep 2021

Stihl successfully invalidates infringer’s colour combination mark

Andreas Stihl, which owns a trademark for an ‘orange and grey’ colour combination for “chainsaws”, has obtained the invalidation of a trademark consisting of the colours orange, milk white and black for goods in Class 7. Read more

7 Sep 2021

Delhi High Court: adoption of ‘Delhi Public School’ marks by purported “permitted users” prima facie invalid

The Delhi Public School Society has been granted an injunction for the second time in a dispute over the use of the words ‘Delhi Public School’ and a crest logo. Read more

6 Sep 2021

High Court allows two ‘Luke’s’ restaurants to co-exist

In this dispute between rival Singapore restaurants, the High Court has decided that the parties’ respective marks and businesses could co-exist, without the relevant public being confused. Read more

Government/Policy

View all
6 Sep 2021

“A quantum leap forward for Fiji brand protection” – praise for first new Trademarks Act in 90 years

The Pacific nation of Fiji has a new Trademarks Act that is set to replace its nearly century-old trademarks act and “has the potential to be amongst the best in the world for a country of its size”. Read more

2 Sep 2021

CNIPA issues draft standards for determining illegal trademark conduct

The China National Intellectual Property Administration has issued draft standards for determining general trademark violations, with the aim of strengthening the administration of trademark use and unifying enforcement standards. Read more

21 Aug 2021

As evidence of plain packaging ineffectiveness grows, a less brand-restrictive alternative must be considered

In an exclusive opinion column, Axess Technologies chair Richard Jotcham gives an alternative perspective on plain packaging since it was first introduced for tobacco products nearly a decade ago. Read more

9 Aug 2021

IP Vietnam issues guidance on deadline extensions amid covid-19 pandemic

Due to the fourth wave of covid-19 in the country, IP Vietnam has announced that all deadlines for any procedures for the establishment of industrial property rights falling within the period from 30 June 2021 to 31 August 2021 shall be automatically extended to 30 September 2021. Read more

Law Firms

View all
28 Aug 2021

An unacceptable approach: Indian bar associations urged to tackle bad practice trend

Having been aggressively berated by IP law firms after receiving legal notices, law firm leader Ashok Ram Kumar calls for Indian bar associations to do more to tackle bad practice. Read more

20 Aug 2021

Legends of the trademark industry: insights from past WTR Lifetime Achievement winners

Continuing our look back at 15 years of the WTR Industry Awards, today we speak with three past winners of the prestigious Lifetime Achievement Award to garner insights into the evolution of the industry. Read more

19 Aug 2021

China’s trademark levels are back on the rise after a relatively slow 2019

The Long Read: WTR’s annual Asia-Pacific deep dive is here, revealing 2020’s top corporate and law firm filers, major trends and everything in between. Read more

9 Jul 2021

North Korea counterfeit crackdown; Banksy trademarks criticised; MARQUES annual meeting update – news digest

In our latest round-up, we look at a court ordering Lotus Health Group to sell trademarks, the Georgian IP office establishing a GI commission, Invest Europe and EUIPO teaming up to support SMEs, and much more. Read more

IP Offices

View all
26 Aug 2021

Trademark Terminal pauses filing operation, as evidence suggests USPTO cracks down

Various controversial low-cost filing agencies, including Trademark Terminal and Trademark Falcon, have stopped accepting new clients, with one expert saying it is “likely” the USPTO has cracked down on the entities. Read more

5 Aug 2021

Exclusive roundtable – how four leading IP offices are cracking down on scams and fraudulent activity

The Long Read: Scams targeting trademark owners are fast becoming commonplace and increasingly sophisticated. Four leading IP offices share their insights on which scams are most prevalent, what you can do to stay safe, the resources on offer to help and how offices are collaborating across borders to fight fraudsters. Read more

4 Aug 2021

China’s trademark year to date: a deep dive into the H1 2021 numbers as CNIPA looks to the future

Last week CNIPA posted a policy interpretation document for various national bodies to provide implementation guidance around its notice on promoting and regulating the operation of IP rights.  Read more

3 Aug 2021

Vietnam IP Research Institute issues guidance on handling requests for IP assessment during covid-19 pandemic

The headquarters of the Vietnam IP Research Institute (VIPRI) have ceased receiving direct requests for IP assessments. Requests may still be made by post or via VIPRI’s e-filing portal, but the delays in receiving conclusions may have an impact on enforcement activities. Read more

Online

View all
17 Aug 2021

Online marketplaces in Russia that should be on counterfeit enforcement radars

Continuing our new regular series on WTR, law firm experts in Russia share the digital marketplaces they think all brand owners should monitor as part of their global anti-counterfeiting efforts. Read more

29 Jul 2021

A new era of working with influencers in India: what brand owners need to know

In an exclusive guest post, Remfry and Sagar partner Samta Mehra looks at the rapidly changing regulations for influencer advertising in India. Read more

23 Jul 2021

Scammed out of $150,000: allegations of fraud, threats and USPTO impersonation

A family in the US has revealed to WTR the trauma of losing $150,000 to a company based in Pakistan, with allegations of threats that have the couple fearing for their safety. Read more

23 Jul 2021

Domain name disputes in Thailand: how to deal with the pitfalls of the country’s domain registration policy

Domain name disputes sometimes arise between trademark owners and Thai-registered companies that exploit the gaps in Thailand’s current domain registration policy. As demonstrated in a recent dispute, court proceedings are not the only option for mark owners. Read more

Portfolio Management

View all
1 Sep 2021

Manuka honey clarified in trademark opposition

The New Zealand body representing a group of ‘manuka’ honey producers has failed to prevent an Australian producer from registering a trademark containing the words ‘Australian manuka’ for honey. Read more

20 Aug 2021

BUTTERMITE v VEGEMITE – a Mitey dispute

Bega Cheese Limited, the owner of the VEGEMITE mark in Australia, has successfully opposed the registration of BUTTERMITE in Class 29. Read more

19 Aug 2021

How the Gazprom Neft in-house team is breaking new ground in the Russian IP space

Gazprom Neft head of trademarks Vadim Nyunyaev reveals how his team is optimising in-house operations and raising the bar for other Russian companies, in an exclusive WTR interview. Read more

13 Aug 2021

Delhi High Court finds that it has territorial jurisdiction based on sale of infringing goods on third-party e-commerce platforms

The availability of infringing products on third-party online marketplaces, such as Amazon, which are accessible from Delhi and deliver goods within Delhi, established cause of action in Delhi. Read more

Trademark law

View all
28 Jul 2021

From Tokyo to Brisbane: inside the ever-evolving Olympic brand protection strategy

Jayne Durden, vice president, law firm strategy at Anaqua, reveals how the International Olympic Committee enforces the Olympic brand and what actions sponsors and advertisers should take through every stage of the Olympic cycle. Read more

28 Jul 2021

“An ambitious landmark” – parliamentary panel in India calls for urgent revival of Intellectual Property Appellate Board

The Indian government’s bipartisan Parliamentary Standing Committee on Commerce has released a new report focused on proposed reforms to India’s IP rights regime. Read more

14 Jul 2021

Artificial intelligence could revolutionise understanding of trademark genericism, groundbreaking study claims

A new study has identified an artificial intelligence approach to establish whether a trademark is generic or distinctive, with the academic behind the research telling WTR why it could lead to invaluable business intelligence. Read more

12 Jul 2021

“A positive step towards efficiency” – Delhi High Court creates dedicated IP Division

Only months after the controversial abolition of India’s Intellectual Property Appellate Board, the Delhi High Court has announced the creation of an Intellectual Property Division. Read more