Asia-Pacific

Trademark filings keep climbing as world edges towards normalcy

The numbers are well above last year’s figures, but the growth may not be sustained

Trademark filings keep climbing as world edges towards normalcy
Live updates: IP offices implement measures in wake of coronavirus crisis
6 May 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.

Covid, GIs, China, Philippines, UAE – five big takeaways from USTR’s 2021 Special 301
4 May 2021

Covid, GIs, China, Philippines, UAE – five big takeaways from USTR’s 2021 Special 301

The Office of the US Trade Representative has published its 2021 Special 301 Report, the first to be released under the Biden administration.

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6 May 2021

IP court finds no abuse where author registered images as trademarks

The Russian IP Court has handed down its decision in a case of unfair use of a trademark, in which it denies the claim of abuse of fair competition in the trademark owner’s actions to acquire exclusive rights to the marks. Read more

5 May 2021

Chinese court ruling gives hope to victims of trademark squatting

This decision of the Minhang District (Shanghai) Court in a case involving the trademarks BRITA and DEBRITA is good news for victims of trademark squatting in China. Read more

30 Apr 2021

Thailand introduces fast-track procedures for trademark examination and renewal

Thailand’s Department of Intellectual Property has introduced fast-track procedures that should enable businesses to implement their IP strategies with fewer delays and obstacles. Read more

30 Apr 2021

Bribery, impersonation, abuse: shocking details revealed in Pakistan fraud case that targeted USPTO users

In newly-obtained documents, it is revealed that “the biggest money laundering case in the history of Pakistan” features claims of impersonating the USPTO, disturbing abuse of employees, and use of paid ads to lure in victims seeking trademark services. Read more

Anti-Counterfeiting

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21 Apr 2021

Appeal court increases Lego’s amount of compensation tenfold

This significant increase in the amount of compensation awarded to Danish toymaker Lego illustrates how China’s courts are cracking down on IP infringement by awarding higher levels of compensation. Read more

13 Apr 2021

Fight or flight? Study finds litigation can be an effective deterrent to future counterfeiting activity

A new study has looked at whether trademark litigation is an effective strategy against counterfeiters, with one of the authors telling WTR that “the legal costs of today’s litigation should be weighed against future infringement”. Read more

9 Apr 2021

New measures to improve IP rights protection system - key points highlighted

A resolution issued by the Uzbek president earlier this year has introduced numerous changes in the IP field. Most importantly, all legal entities and individuals are now entitled to register trademarks and service marks. Read more

8 Apr 2021

Seven strategic takeaways from Brand Strategy India 2021

Over the past two days, WTR has hosted a number of ‘Brand Strategy India’ sessions at the IPBC India virtual event. These discussions  have offered a range of critical takeaways for rights holders. Read more

Brand management

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28 Apr 2021

Privacy alarm as applicant passport details published by China National Intellectual Property Administration

China’s National Intellectual Property Administration has published the passport details of thousands of individuals, WTR can reveal, including public figures such as Taylor Swift, JK Rowling and Lionel Messi. Read more

27 Apr 2021

The Rolling Stones and New Balance feature in Asia-Pacific Legal Updates you may have missed

Each quarter we will be running a series of pieces presenting recent Legal Updates that you may have missed. For this instalment we turn our attention to the Asia-Pacific region. Read more

14 Apr 2021

“This will be an impediment to India’s image”: concerns over costs and backlogs voiced after IPAB is abolished

Last week the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance 2021 was promulgated, effectively abolishing India’s IP Appellate Board and transferring its functions to the country’s commercial and high courts. Read more

13 Apr 2021

Activision strikes back with Warzone lawsuit; France.com fight continues; Leason Ellis brand refresh – news digest

In our latest round-up, we look at the IP Office of New Zealand launching a new hearings initiative, Canopy Growth acquiring a leading marijuana brand, and much more. Read more

Enforcement and Litigation

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29 Apr 2021

A case of striking impression (and all that jazz)

This decision of the Federal Court of Australia in a case involving the use of the terms ‘corner’ and ‘corner hotel’ for live music venues reinforces the importance of considering the ‘striking’ impression left by the uncommon element(s) of a mark. Read more

28 Apr 2021

New Zealand’s strict ‘use it or lose it’ approach in partial revocation proceedings - and how it differs from Australia’s approach

This decision provides helpful guidance on the principles for partial revocation of trademark registrations in New Zealand, while highlighting important differences between the law and practice on non-use removal proceedings in Australia and New Zealand. Read more

27 Apr 2021

China publishes five-year plan to improve IP judicial system, but risk of increasing disputes could have adverse effect

The Supreme People’s Court has released its IP Judicial Protection Plan 2021-2025 in the latest of a series of moves by the government to help strengthen the Chinese IP regime. Read more

14 Apr 2021

While “You can’t always get what you want”, the Stones did get some “Satisfaction”

The “Hand of Fate” - or at least IP Australia - was smiling on Mick Jagger and the Rolling Stones in their recent victory over Australian fashion company We the Wild Ones. Read more

Government/Policy

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21 Apr 2021

“A paradigm shift must take place”: IPOPHL director general outlines roadmap for transforming the ASEAN IP environment

WTR sits down with Intellectual Property Office of the Philippines Director General Rowel S Barba to get the inside track on the office’s ambitions for its new role as chair of the Association of Southeast Asian Nations Working Group on IP Cooperation. Read more

21 Apr 2021

What the EU-China GI agreement means for rights holders

In this guest post, Susan Fan, senior trademark agent in the Rouse Shanghai office, reflects on the impact of the latest EU-China agreement on GIs and presents insight into local and international protection strategies. Read more

16 Apr 2021

Government reform and incentives have created a robust trademark ecosystem in India: top filers revealed

Asia’s third-largest economy is now the third-most active register in the world thanks to a hot start-up scene and prolific local filers Read more

16 Apr 2021

“There may be chaotic situations”: the practical impact of abolishing India’s IPAB

In this guest analysis, Shailendra Bhandare, partner at Khaitan & Co, explores the short and long-term impact of the move to abolish India’s  IP Appellate Board. Read more

Law Firms

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8 Apr 2021

New WTR report charts the rise of mass filers and impact on trademark ecosystem

Whether they are specific individuals or particular jurisdictions, the rise to prominence of mass filers over the past few years has had a significant impact on the trademark landscape. Read more

6 Apr 2021

Burger King trolls McDonald’s; INTA weighs in with EUIPO amicus brief; Mondelez and Grenade tie-up – news digest

In our latest round-up, we look at the CCFN welcoming the USTR’s stance on geographical indications, Brand Finance marking its silver anniversary, the Philippines taking over the ASEAN IP cooperation group, and much more. Read more

1 Mar 2021

USPTO urged to set up task force to address scams following massive Pakistan fraud case

A week after WTR revealed a massive fraud and money laundering case in Pakistan involving the targeting of USPTO users, experts are calling for urgent action to identify those potentially impacted. Read more

23 Feb 2021

USPTO users targeted in massive fraud and money laundering case in Pakistan

US trademark applicants appear to be victims of what has been described as “the biggest money laundering case in the history of Pakistan”, involving low-cost trademark filing platforms that allegedly sent fake USPTO certificates to clients. Read more

IP Offices

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29 Apr 2021

Exclusive roundtable – IP offices reveal how covid-19 could shape future operations

The Long Read: As remote working has become du jour for many, WTR asks the IP offices of Canada, the European Union, Singapore, South Korea and the United Kingdom to reflect on the ups and downs of operating during a global pandemic – and what might remain of the systems developed over the past year. Read more

3 Apr 2021

Following in the footsteps of Michael Jordan, New Balance, Peppa Pig and Puma, expect more high-profile trademark decisions in China in the coming months

In our latest Saturday opinion column, we look at recent policy announcements and big decisions in China. Read more

24 Mar 2021

Innovation at the Hong Kong IP Office: spotlight on non-core tools and services

In exclusive insights, the Hong Kong IP Department reveals its innovative non-core tools and services for trademark users – and some of those planned for the future. Read more

22 Mar 2021

BBC’s pragmatic domain approach; brand purpose; counterfeiters using live-streams  – takeaways from WTR Connect

Takeaways from the final three days of WTR Connect, including insights from brand professionals at Vodafone, Unilever, Coty, Dyson, Reckitt Benckiser and the International Anticounterfeiting Coalition. Read more

Online

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16 Apr 2021

Changes to ‘.au’ domain name rules: implications for Australian trademark owners

New eligibility rules for holding a ‘.au’ domain name came into effect on 12 April 2021. It is particularly important for foreign entities holding ‘.au’ domain names to assess whether they will remain eligible. Read more

26 Mar 2021

Alibaba releases 2020 IP protection statistics as engagement with anti-counterfeiting alliance grows

Alibaba has released statistics from its 2020 IP Rights Protection Report, revealing that 96% of suspected infringing listings were proactively detected and removed after posting, before a sale could be made. Read more

19 Mar 2021

Tiger King trademark fight; USPTO AI use; Sakpatenti to launch mediation – news digest

In our latest round-up, we look at ICANN being requested to hit the pause button on WHOIS reforms, adidas and Peloton collaborating, and much more. Read more

10 Mar 2021

Brand enforcement is “an art, not a science” – exclusive interview with Marriott’s Elisabeth Escobar

In a candid conversation with Elisabeth Escobar, WTR hears how the hotel company has weathered the storm faced by the hotel sector in the pandemic. Read more

Portfolio Management

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9 Apr 2021

RestQ sleep aid products restrained due to similarity to Rescue Sleep products

The Australian Federal Court has restrained the maker of a sleep aid product from using the name RestQ due to the similarity with an existing product for dealing with sleeplessness sold under the names Rescue and Rescue Sleep. Read more

6 Apr 2021

Bombay High Court: phonetic differences between STIMULIV and STIMULET not sufficient to tell one from the other

This decision of the Bombay High Court highlights that, when pharmaceutical preparations are involved, there should not be the slightest possibility of confusion, error or mistaken identity. Read more

19 Mar 2021

Recent IP Court decisions highlight registrability issues for trademarks including numbers

Taiwan’s IP Court has recently issued two decisions involving Volkswagen’s mark ID.4 and Taipei Financial Center Corporation’s mark 101 - with very different outcomes. Read more

18 Mar 2021

Morality refusal grounds are gone from the United States but are alive and well in China

In China, a broad swath of trademarks are likely to be refused based on the grounds that they are ‘unhealthy’. Read more

Trademark law

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12 Apr 2021

Throwing shade at shadow companies - amendments to the Provisions on Administration of Enterprise Name Regulations

Compelling a shadow company to change its trade name used to be a costly and time-consuming exercise. However, several administrative measures have recently been introduced, marking a major improvement in the fight against shadow companies in China. Read more

5 Mar 2021

Philip Morris Korea win highlights importance of royalties documents

Trademark experts explain the importance of distinguishing the kinds of intellectual property that royalty payments are for when importing raw materials into South Korea. Read more

25 Feb 2021

New Zealand far-right group’s use of certification mark demonstrates importance of politically minded enforcement

WTR spoke to brand experts on what recourse Buy New Zealand Made has available, as well as when entering the political fray is necessary to protect a mark’s reputation. Read more

19 Feb 2021

“A regressive step” – outcry at new Indian government bill to abolish IP Appellate Board

The lower house of Indian Parliament has introduced a "surprise" bill that proposes to abolish India’s IP Appellate Board, a move that could have a profound impact for domestic and international trademark owners. Read more

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