Asia-Pacific

“The most significant precedent”: New Balance scores China Supreme Court victory against copycats

China’s Supreme People’s Court has invalidated two trademarks imitating the signature N mark owned by New Balance. The company’s Shanghai-based IP counsel describes the decision as “a powerful weapon” for all brand owners.

“The most significant precedent”: New Balance scores China Supreme Court victory against copycats
Live updates: IP offices implement measures in wake of coronavirus crisis
7 Apr 2020

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.

How trademark service providers are helping customers through the coronavirus pandemic
6 Apr 2020

How trademark service providers are helping customers through the coronavirus pandemic

Sortify.tm has offered free access for the next three months. WTR spoke to them and reached out to other service providers on their circumstantial offerings.

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Today

Expedited examination of trademark filings now easier to request

The Korean Intellectual Property Office is now allowing requests for expedited examination as long as the applicant pays for a prior trademark search. It is expected that requests for expedited examination will rise as a result. Read more

6 Apr 2020

Singapore ranked world’s most innovative IP office in exclusive research

In new research from WTR, the Intellectual Property Office of Singapore has been ranked as the most innovative IP office in the world for the first time. Read more

6 Apr 2020

Blow for Discovery as opposition against DISCOVERY CAMPS mark is rejected

The Intellectual Property Office of Singapore has rejected an opposition by media giant Discovery Communications LLC against the registration of the mark DISCOVERY CAMPS by a local company. Read more

6 Apr 2020

IP Vietnam issues guidance on deadline extensions and filing methods during covid-19 pandemic

Due to the covid-19 pandemic, IP Vietnam has ceased to accept direct filings since 30 March 2020 until further notice. On 31 March and 3 April 2020, IP Vietnam issued two notices providing guidance on extensions of deadlines and filing methods during this period. Read more

Anti-Counterfeiting

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6 Apr 2020

Managing finite filing budgets; the looming brand value crisis; Intel on diversity: new edition of WTR is now live

The Spring 2020 edition of WTR is now available online to subscribers, offering the latest litigation tips, insight into IP office innovation, wellbeing considerations, and much more. Read more

6 Apr 2020

China’s rapid expansion: a lasting impact on the trademark landscape

Chinese filing data reveals that while trademark output may be slowing down, local IP owners are just getting started as brand values skyrocket and focus turns to foreign registers. Read more

3 Apr 2020

Spike in coronavirus knock-offs; Tiger King trademark fiasco; new TMview and DesignView – news digest

In our latest edition, we look at how counterfeit vaping devices are resurfacing as a major issue, the first well-known trademark being registered in Tajikistan, a new CEO being unveiled at UpCounsel, and much more. Read more

31 Mar 2020

ECTA 2020 postponed; Stone Brewing case update; another Chinese perspective on coronavirus – news digest

In our latest round-up, we look at counterfeit Rolex watches being seized in Philadelphia, WIPO giving an update on World IP Day, preparing for a trademark filing flurry linked to Harry and Meghan, and much more. Read more

Brand management

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6 Apr 2020

Brand creation and protection: out with the old

Trademark experts from across the globe offer critical insight into brand creation best practice and guidance on pitfalls to avoid. Read more

6 Apr 2020

Why the brand bubble could be about to burst

With over 20 years’ experience assessing the value of intangible assets worldwide, Brand Finance’s David Haigh warns that slow growth and an international crisis could mean that brands are on the brink of a global crash. Read more

6 Apr 2020

WTR Industry Awards 2020: the shortlist revealed

The WTR Industry Awards 2020 honour leading trademark teams and individuals across a range of sectors. Here we unveil the shortlist. Read more

3 Apr 2020

Samsung knows how to stand out from the crowd, and this is key to building its brand equity

The company has survived ups and downs with relative ease by focusing on its core values of quality and innovation. Read more

Enforcement and Litigation

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6 Apr 2020

OEM for export: balancing trademark rights and Chinese economics

Despite courts vacillating between opposing positions on whether affixing a trademark to OEM goods for export constitutes use or non-use of a trademark, the Supreme People’s Court now appears to have settled on an answer. Read more

2 Apr 2020

Prior use defence: trademark use must be continuous and voluminous

In a dispute between two mattress manufacturers over the use of the NO TURN mark, the High Court of Delhi has held that the prior use defence in a trademark infringement/passing-off action cannot be accepted where the use is intermittent and not voluminous. Read more

1 Apr 2020

Supreme Court holds that first sale doctrine still applies to sales of goods in violation of sales restrictions in licence agreement

In a blow for licensors in South Korea, the Supreme Court has held that a distributor which sold products that it believed to have been lawfully obtained from a trademark licensee was not criminally liable for trademark infringement. Read more

30 Mar 2020

Honda ruling offers key takeaways for OEM and trademark use in China

The Supreme People’s Court decision in Honda provides some much needed clarity on the issue of trademark use in original equipment manufacturing and what constitutes a ‘relevant public’. Read more

Government/Policy

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31 Mar 2020

Indonesian IP office and other government bodies limit operations due to covid-19

Pursuant to a notification issued on 30 March 2020 regarding the Covid-19 outbreak, the Indonesian Directorate General of Intellectual Property has closed its physical counters while optimising online channels for IP matters. Read more

19 Mar 2020

Trademark agencies fined for seeking to register names of Wuhan coronavirus hospitals in bad faith

Two Chinese trademark agencies have been fined Rmb100,000 for filing bad-faith applications for the marks HUOSHENSHAN and LEISHENSHAN – the names of the hospitals built to treat coronavirus patients in Wuhan City. Read more

13 Mar 2020

"The most sensible decision": INTA moves 2020 Annual Meeting to November as coronavirus emergency intensifies

As the coronavirus pandemic grips the world, INTA has announced that its 2020 Annual Meeting will now be combined with its Leadership Meeting and take place in November – with an exact date and venue to be confirmed soon. Read more

13 Mar 2020

Coronavirus phishing warning; USPTO responds to WIPO election; Microsoft sued in Azure dispute – news digest

In our latest edition, we look at lawyers decrying ‘dumb’ and ‘gross’ coronavirus vaccine trademarks, the UK police seizing over £7 million in suspected fake goods, and much more. Read more

Law Firms

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20 Mar 2020

Singapore’s goal of achieving top-tier status as a hub of innovation and IP looks attainable

Its local brands have an international focus, and big global names also flock to this market. Read more

18 Mar 2020

“We will weather the storm” – coronavirus perspective from a Chinese IP practitioner

In an exclusive insight, a leading trademark attorney in China provides an update on what the situation is like on the ground for IP law firms, and offers advice to practitioners who may now be changing their workflow due to measures related to the Covid-19 pandemic. Read more

12 Mar 2020

Law firms respond to coronavirus emergency as situation worsens

In our latest opinion column, we look at how law firms are – and should be – responding to the novel coronavirus epidemic. Read more

6 Mar 2020

Daren Tang and US react to WIPO win; Cypriot Halloumi victorious; Virginia is non-lactose milk intolerant – news digest

In our latest roundup, we look at a Chinese event promising to keep to its June date, Brooks Brothers continued trademark spat, Hugo Boss’s reply to Hugo Boss, and much more. Read more

IP Offices

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6 Apr 2020

Innovation domination: the IP offices breaking through boundaries

In the 2020 edition of our exclusive research project into the most innovative IP offices in the world, we found significant improvements in non-core tools and services – although gaps remain. Read more

17 Mar 2020

Good news for brand owners and practitioners: Trademark Office publishes opposition decisions

In a widely applauded move, the China Trademark Office has announced that it would publish trademark opposition decisions issued as of 1 January 2020. Read more

5 Mar 2020

Daren Tang to WIPO: the trademark community reacts

With Daren Tang of Singapore set to take over as WIPO's next director general, we reached out to people in the trademark industry on how they think he could shape the organisation in the years to come. Read more

4 Mar 2020

Singapore’s Daren Tang wins nomination to be next WIPO director general

After weeks of lobbying, Daren Tang of Singapore has won the nomination to be the next director general of the World Intellectual Property Organisation. Read more

Online

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25 Mar 2020

While ‘Tokyo 2020’ will now take place in 2021, brands will get their time to shine

The Olympics is a world-renowned brand which lends its powerful reputation to its partners and sponsors. Given its reach and reputation, the IOC does not play around with its trademark protections. Read more

27 Feb 2020

Delhi High Court: Amazon entitled to rely on exhaustion defence and claim safe harbour protection

In a landmark decision, the Division Bench of the Delhi High Court has set aside a decision preventing Amazon Seller Services, Cloudtail and Snapdeal from selling the goods of direct-selling entities Amway India, Oriflame India and Modicare. Read more

27 Feb 2020

How intellectual property transformed the e-sports industry: interview with Fnatic’s Andrew Cooke

In a conversation with WTR, Andrew Cooke, general counsel of e-sports team Fnatic, reveals that an entire generation of e-sports athletes are waking up to the power of their IP as brands race to catch up with this rapidly evolving consumer market. Read more

18 Feb 2020

Holden brand retired; EUIPO coronavirus extension; Japan GI cancellation – news digest

In our latest round-up, we look at Amazon car seat criticism leading to calls for legal reform, New Zealand being added to the TMview roster, US and China battling over the WIPO director general position, and much more. Read more

Portfolio Management

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27 Mar 2020

Twitter: the land of risk and opportunity

The social media giant has found its voice, and is helping others to build and differentiate their own brands Read more

18 Mar 2020

Guideline for handling outstanding appeals against disclaimers imposed by IP Vietnam

The Intellectual Property Office of Vietnam recently issued Notification 3280/TB-SHTT, which provides guidance on filing appeals against disclaimers made by the office, which were submitted before 15 January 2018 and remain unresolved. Read more

11 Mar 2020

Allianz retains ROSNO mark following dispute with competitor

In the dispute between insurance companies Allianz and RESO-Chance, the Russian IP Court has ordered the partial termination of one of Allianz’s ROSNO marks for certain services, but found that the other marks had been put to genuine use during the relevant period. Read more

9 Mar 2020

Significant changes to Vietnam’s trademark examination practices

Following two meetings held by IP Vietnam and the Vietnam Intellectual Property Association in December 2019, IP Vietnam has clarified several key examination practices and highlighted possible changes to the relevant regulations. Read more

Trademark law

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3 Apr 2020

Demonstrate a high reputation to evict squatters

Trademark squatting is rife in China, so it pays to register fast. If a dishonest filing has already been made, showing that a trademark enjoys a high reputation can help in opposition or invalidation proceedings. Read more

3 Apr 2020

New legislation brings even greater protection for well-known marks

The passing of new trademark legislation has strengthened the hand of owners of well-known and famous marks in Malaysia. Case law under the new statute is sparse, but the courts remain supportive of rights holders. Read more

3 Apr 2020

Securing well-known status: if at first you don’t succeed, conduct market research

With few marks recognised as well known in Russia, evidence of use in the country, consistent branding and market research can be key to gaining such status, but it often requires perseverance. Read more

11 Mar 2020

Call for more cooperation between government and brands to curb counterfeits in Philippines

Joy Belmonte, mayor of Quezon City, has vociferously opposed the alleged distribution of over 1,000 fake trainers to local athletes and, crucially, has taken action to bolster the work of anti-counterfeiting agencies. Read more