Asia-Pacific

From K-pop to Presley: inside the trademark portfolios of the music industry’s biggest names

When it comes to trademarks, some musicians are clearly a step ahead. For others, the need to consider protection provides a potential new client base for practitioners. We delve into the portfolios and filing trends of both global and local recording artists.

From K-pop to Presley: inside the trademark portfolios of the music industry’s biggest names
19 Mar 2019

Louis Vuitton victory, Apple Pencil confusion, and brand loyalty declining: news digest

In our latest edition, we look at a call for post-Brexit partnerships to combat fakes, looking ahead to the WIPO elections, the IP Office of the Philippines seeking to regulate Facebook sellers, and much more.

18 Mar 2019

EUIPO calls for action as study finds fakes make up 3.3% of global trade

A new study from the EUIPO and the OECD has revealed the staggering rise in counterfeit goods being traded around the globe. In response, the executive director of the EUIPO has called for coordinated action.

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22 Mar 2019

Review your IP arrangements: IP exemption from competition laws soon to be repealed

Section 51(3) of the Australian Competition and Consumer Act, which exempts conditional licensing or assignment of IP rights from most of the prohibitions on cartel conduct, is due to be repealed. Businesses are strongly urged to review their IP arrangements to ensure that they comply with the competition laws. Read more

15 Mar 2019

Chicago Mercantile Exchange v Intercontinental Exchange: exclusively descriptive names are not registrable trademarks

A recent decision of the IP Office of Singapore in invalidity proceedings illustrates that, even if a party is the sole provider of a particular product or service, it does not automatically acquire the right to register the mark covering that product or service. Read more

15 Mar 2019

Beyoncé trademark battle, Saudi fees fall, and HP on Paraguay fakes approach: news digest

In our latest edition, we look at India taking a step towards aligning itself with the global trademark system, Ghostbuster Dan Aykroyd prevailing in an infringement case, and much more. Read more

15 Mar 2019

What Turkey’s domestic economic difficulties mean for brands and their advisers 

Political and economic circumstances have made it difficult for domestic brands to build value, which could prove to be a setback for future growth. However, this could also create opportunities for law firm practitioners. Read more

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Anti-counterfeiting

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12 Mar 2019

Alibaba reaches settlement, new Hong Kong IP director, and Swiss IP office issues fakes warning: news digest

In our latest round-up, we look at the New Zealand IP office issuing a stark warning against misleading mislead invoices, $1.1 million worth of counterfeits stopped on Canada-US border, and much more. Read more

5 Mar 2019

GNSO Council approves EPDP report, Amazon Project Zero concern, and Puma infringement: news digest

In our latest round-up, we look at the CEO of INTA penning a column about brand restrictions in Malaysia, a KFC restaurant in China memorialising a “Communist hero”, and much more. Read more

28 Feb 2019

Delhi High Court imposes substantial punitive damages on habitual infringers

In Whatman International Limited v Mehta, the Delhi High Court has taken a stern stance against habitual infringers. The decision shows that the Indian courts are increasingly adopting a zero-tolerance policy in such cases. Read more

15 Feb 2019

Venezuela trademark warning, IP Australia chatbot success, and triumph for Butlers in the Buff: news digest

In our latest round-up, we look at a new online service launched by the Swedish IP Office, the Babybel wax-coating trademark being invalidated, scammers filing “fake trademarks” to hijack Instagram accounts, and much more. Read more

Brand management

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8 Mar 2019

From the old to the new: inside Mondelēz’s evolving brand portfolio strategy

The snack giant has traditionally focused on existing famous brands; however, the healthy living trend now presents both challenges and opportunity. Read more

5 Mar 2019

Absolute last chance to have your say on the state of the trademark industry

Trademark practitioners have one more day to participate in WTR’s annual Global Trademark Benchmarking Survey. With just hours left, do not miss out. Read more

1 Mar 2019

How branding could be a golden opportunity for mining companies 

In an exclusive data analysis, we look at how mining companies have yet to appreciate the value of brand strength in an era of growing expectations around corporate social responsibility. Read more

26 Feb 2019

Just one week left to have your say on the state of the trademark industry

Trademark practitioners are running out of time to participate in WTR’s annual Global Trademark Benchmarking Survey. Do not miss out on the opportunity to share your successes, challenges and concerns.  Read more

Enforcement and litigation

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15 Mar 2019

Chicago Mercantile Exchange v Intercontinental Exchange: exclusively descriptive names are not registrable trademarks

A recent decision of the IP Office of Singapore in invalidity proceedings illustrates that, even if a party is the sole provider of a particular product or service, it does not automatically acquire the right to register the mark covering that product or service. Read more

12 Mar 2019

Russian IP Court confirms invalidation of BBC’s TOP GEAR mark

In a controversial decision, the Russian IP Court has upheld a Patent and Trademark Office decision which found the British Broadcasting Corporation’s TOP GEAR trademark to be invalid based on the existence of a senior, almost identical mark belonging to a third party. Read more

11 Mar 2019

China looking to hold accountable not only trademark squatters, but also facilitating agents

The recent publication of a discussion paper seems to signal a stricter approach by the IP authorities to tackle the problem of parties taking unfair advantage of the system in China at the expense of genuine rights holders.    Read more

8 Mar 2019

New Uzbekistan resolution aims to strengthen enforcement efforts

The Uzbek government has signed a resolution to tackle the urgent issue of trademark squatting of global brands. The resolution makes significant changes to how trademarks are registered and protected in the country. Read more

Goverment/policy

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22 Feb 2019

Supreme People’s Court’s Regulations on Act Preservation for Intellectual Property Disputes – key points explained

In a welcome development for IP owners, the Regulations on Act Preservation for Intellectual Property Disputes, which provide clear and specific guidance on how to apply for an act preservation order, came into effect in China on 1 January 2019.   Read more

20 Feb 2019

“We all need to embrace change, whether we like it or not”: exclusive interview with INTA CEO

WTR speaks with Etienne Sanz de Acedo about how INTA is evolving, as well as the need for trademark practitioners to embrace the new. Read more

12 Feb 2019

Plain packaging passed in Singapore, cat photo trademarks, and US Senate IP subcommittee: news digest

In our latest round-up, we look at a new report showing 70% of Kenyans use counterfeit products, a new system developed to identify fake logos, the Spanish football league scoring a piracy win, and much more. Read more

5 Feb 2019

Thailand poised to adopt plain packaging for tobacco products

The Thai Ministry of Public Health’s National Tobacco Control Committee has approved a draft regulation requiring plain packaging to replace all current packaging for tobacco products. The change will make Thailand the first country in Asia to adopt plain packaging legislation. Read more

Law firms

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21 Feb 2019

Trademark opportunities and threats: have your say on the state of the industry

Our annual research is designed to give counsel – both in-house and in private practice – the opportunity to share their successes, challenges and concerns from the past 12 months. Read more

13 Feb 2019

Not long left to let us know the challenges affecting your trademark practice

For the 11th year in a row, trademark practitioners are invited to participate in our annual Global Trademark Benchmarking Survey to let us know how practice is evolving to counter new threats and embrace new opportunities. Read more

11 Feb 2019

The evolution of Airbnb’s trademark strategy, and what it means for law firm collaborations

Alica Del Valle, lead counsel for IP, marketing, PR and content at Airbnb, expands on the Silicon Valley company’s fast-changing trademark strategy, what it demands from law firm partners and the creation and protection of its Chinese brand, Aibiying. Read more

23 Jan 2019

You get what you pay for? Variances in law firm hourly rates revealed

New research has revealed the variance in the hourly rates charged by law firm practitioners for trademark-related work in key jurisdictions, with the hourly rate for a partner ranging from $30 to $880. Read more

IP offices

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12 Mar 2019

KIPO amends trademark examination guidelines – key changes highlighted

The Korean Intellectual Property Office has amended its trademark examination guidelines, effective as of 1 January 2019. This update reviews the main points of interest for trademark owners and applicants. Read more

27 Feb 2019

IP offices going above and beyond

In exclusive research, WTR looks at the innovative non-core tools and services being offered by national IP registries around the world. Read more

27 Feb 2019

IP offices of EU, Chile, Singapore and Spain named most innovative in the world

In exclusive research from WTR, the EUIPO has been ranked as the most innovative IP office in the world for the third year in a row. Closely behind are the registries of Chile, Singapore and Spain. Read more

21 Feb 2019

Industrial Design Law adopted by Parliament - key points highlighted

The Myanmar Industrial Design Law was passed by the Assembly of the Union on 30 January 2019 following its adoption by the Lower House and the Upper House. This update reviews the main points that industrial design owners should be aware of. Read more

Online

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25 Feb 2019

The digital revolution and the future of India’s financial service brands

India's banks operate in one of the world's most active fintech markets. As fraudsters try to take advantage, financial companies must be ready to stop brand infringement. Read more

7 Dec 2018

Turkey plain packaging, WIPO praises Pakistan IPO and '.amazon' up in the air: news round-up

In our latest round-up, we look at a tussle over BRENT marks in Singapore, a "worrying trend" of retail fakes in Papua New Guinea, a new UK IP minister, and much more. Read more

30 Nov 2018

China launches new online trademark system; expert calls for focus on examination quality

China’s National Intellectual Property Administration has launched its new online trademark services system, with one local expert telling WTR that the next task should be “to retain – or arguably regain – the quality of examination”. Read more

26 Nov 2018

Dolce & Gabbana backlash in China: a reputational, financial and political perfect storm

We take a deep-dive into the brand backlash against Dolce & Gabbana in China, after an advertising campaign was deemed racist and insensitive. Read more

Portfolio management

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8 Mar 2019

From the old to the new: inside Mondelēz’s evolving brand portfolio strategy

The snack giant has traditionally focused on existing famous brands; however, the healthy living trend now presents both challenges and opportunity. Read more

1 Mar 2019

How branding could be a golden opportunity for mining companies 

In an exclusive data analysis, we look at how mining companies have yet to appreciate the value of brand strength in an era of growing expectations around corporate social responsibility. Read more

26 Feb 2019

Just one week left to have your say on the state of the trademark industry

Trademark practitioners are running out of time to participate in WTR’s annual Global Trademark Benchmarking Survey. Do not miss out on the opportunity to share your successes, challenges and concerns.  Read more

25 Feb 2019

Financial brand protection: it is about the money

Financial companies must balance what is distinctive and recognisable in a brand with what is descriptive and easy to understand. Moreover, defensive registrations can provide greater protection against brand damage. Read more

Trademark law

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27 Feb 2019

Comprehensive and Progressive Agreement for Trans-Pacific Partnership introduced in Vietnam: impact on current IP regulations

The Comprehensive and Progressive Agreement for Trans-Pacific Partnership came into effect in Vietnam on 14 January 2019. The requirement that a trademark licence agreement must be registered in order to take effect against third parties will be removed. Read more

26 Feb 2019

Trademarks (Amendment) Bill 2019 gazetted - what you need to know

The Trademarks (Amendment) Bill 2019, which empowers the registrar to make essential procedural rules to implement the Madrid Protocol in Hong Kong, was gazetted on 8 February 2019. Read more

18 Feb 2019

Agencies and individuals to be targeted in proposed China crackdown on malicious applications

The CNIPA has revealed plans to curb malicious trademark applications, with both individuals and trademark agencies that file such applications in its sights. The plans have been characterised as “undoubtedly good news for trademark owners" by a leading legal expert in the country. Read more

14 Feb 2019

How Starbucks is protecting its brand in China – exclusive interview

Batur Oktay, who leads Starbucks’ IP committee, explains how the company is working with Chinese authorities to tackle counterfeiting and provides insights into its changing prosecution strategy. Read more

Find an expert

Theophilus Emuwa
Managing Partner
Lagos, Nigeria
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