China

Apple tops designation ranking as companies eye Vietnam expansion

The Southeast Asian country already had a thriving economy, but it is now directly benefiting from the trade war as companies like Apple consider relocating production lines.  

Apple tops designation ranking as companies eye Vietnam expansion
11 Jun 2019

Huawei versus United States: why trademark professionals must follow this IP technology dispute

Chinese technology giant Huawei is reportedly stepping up development of an alternative operating system. Should it be forced to launch this platform, it could have a direct impact on future trademark enforcement programmes.

10 Jun 2019

Counterfeits on TikTok: IP enforcement best practices

In an exclusive article, digital brand consultant Steven Ustel reveals the scale of counterfeiting on TikTok and its Chinese equivalent Douyin – and recommends ways for brand owners to mitigate the risks on the platforms.

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14 Jun 2019

First oral hearing held before TRAB in non-use cancellation appeal

In proceedings involving the ‘Hao Yao Shi’ logo mark, the Chinese Trademark Review and Adjudication Board has agreed for the first time to conduct an oral hearing for an appeal in a non-use cancellation action. Read more

8 Jun 2019

Esports: an untapped market for both brands and law firms

The industry is still in its early days, but it is growing by leaps and bounds. Brands such as Coca-Cola and Champion have already jumped into the ring to capitalise on this marketing opportunity, but teams need help getting their portfolios up to scratch to better grow their businesses. Read more

6 Jun 2019

China steps up IP protection further

On 23 April 2019 the National People’s Congress approved amendments to the Trademark Law and Anti-unfair Competition Law, among others. The speedy approval of these amendments demonstrates China’s dedication to strengthening the protection of IP rights.   Read more

4 Jun 2019

Supreme prevails in China, fake Trump socks, and the most well-known brands in Africa revealed: news digest

In our latest news digest, we look at the rise of sonic brands, how brand investment in influencers is on the rise, ICE sending out a warning before the NBA finals, the New Zealand IP Office warning of scam letters, and much more. Read more

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Anti-counterfeiting

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16 May 2019

Alibaba issues IP protection report; expands on future plans in exclusive interview

Alibaba has released its IP Protection Annual Report, revealing that it provided 1,624 IP-related leads to law enforcement in 2018. Speaking to WTR, Alibaba Group's Matthew Bassiur reveals some of the company's ambitious future brand protection plans. Read more

1 May 2019

Seven strategies for dealing with enforcement at notorious markets in China

Brand victories in the fight against physical market sellers and landlords are all too rare. However, there are a number of practical strategies that can be employed to maximise success in the battle against counterfeits. Read more

30 Apr 2019

Copycat wine corked, Dettol most trusted brand, and Lego gang knocked out: news digest

In our latest round-up, we look at China hitting back at IP criticism, USPTO revealing cryprocurrency-related trademark applications, Alibaba settling a counterfeits case, and much more. Read more

26 Apr 2019

Blow for Alibaba, good news for Amazon: USTR releases latest notorious markets list

The Office of the United States Trade Representative (USTR) has released its latest notorious markets list, with Alibaba’s Taobao platform included for the third consecutive year.  Read more

Brand management

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20 Apr 2019

Luxury companies are edging into the travel industry, but a high-end reputation is not everything

LVMH’s purchase of Belmond reflects an ongoing trend in the luxury market towards the travel industry. However, brands must be wise in this transition as there are endless opportunities for reputational damage. Read more

11 Apr 2019

Video game industry may face digital overhaul, but Nintendo can always call upon Mario

Big Tech has dipped its toes into the industry, posing a risk to traditional manufacturers. We take a deep dive into one of the market’s biggest players, Nintendo, to understand how its brands have helped the company sustain its success. Read more

28 Mar 2019

How counterfeiters are using “secret stores” to hide from online marketplace takedowns

An investigation from WTR has found that counterfeit sellers on online marketplaces are setting up so-called “secret stores” to avoid increasingly sophisticated takedown measures.  Read more

21 Mar 2019

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. Read more

Enforcement and litigation

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14 Jun 2019

First oral hearing held before TRAB in non-use cancellation appeal

In proceedings involving the ‘Hao Yao Shi’ logo mark, the Chinese Trademark Review and Adjudication Board has agreed for the first time to conduct an oral hearing for an appeal in a non-use cancellation action. Read more

6 Jun 2019

China steps up IP protection further

On 23 April 2019 the National People’s Congress approved amendments to the Trademark Law and Anti-unfair Competition Law, among others. The speedy approval of these amendments demonstrates China’s dedication to strengthening the protection of IP rights.   Read more

4 Jun 2019

China’s enforcement changes: “A new opportunity for IP investigations”

Recent changes in China’s IP enforcement landscape have resulted in the newly formed Food and Drugs Crime Investigation Bureau taking on responsibility for IP crime investigations.  Read more

15 May 2019

Improving collaboration between rights holders and Chinese authorities – exclusive guest post

Jack Chang, special counsel to the chair of L Brands International and one of the founders of the Quality Brands Protection Committee, provides insight into working more effectively with Chinese authorities in IP crime cases. Read more

Goverment/policy

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5 Apr 2019

“Chinese superstars also dress in replicas” – perspectives from a counterfeiter in China

In a bid to shed light on the mindset of counterfeit sellers, WTR has spoken to a seller of replica goods in China about their background, motivation and strategies, offering a rare insider glimpse into this often shadowy industry.  Read more

3 Apr 2019

 “You can’t sleep or you will fall behind”: exclusive look inside Alibaba’s fight against fakes

We sit down with Alibaba Group’s vice president and head of global intellectual property enforcement, Matthew Bassiur, to discuss Alibaba’s anti-counterfeiting activities and how it changed industry perception of its enforcement efforts. Read more

28 Mar 2019

Alibaba Anti-Counterfeiting Alliance seized $536.2 million in fake goods last year: WTR exclusive

WTR can exclusively reveal that in 2018, criminal investigations led by Alibaba and the member brands of its anti-counterfeiting alliance resulted in the arrest of 1,277 suspects and counterfeit seizures that totalled $536.2 million. Read 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. Read more

Law firms

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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

13 Dec 2018

“Sometimes you need a firm that will shoot from the hip”: insights from 7-Eleven’s Allison McDade

In an exclusive interview, Allison McDade shared her approach to tackling imitation convenience stores in Asia and explained the challenges stemming from the company’s expansion. Read more

31 Aug 2018

Fake Warren Buffett fools thousands, Monsta mashes Monster, and Starbucks and Sardarbuksh dispute brews: news round-up

In our latest round-up, we look at a Canadian coalition urging that cigar companies be exempt from proposed plain packaging regulations, the Chinese government promising stricter IP protections, and much more. Read more

IP offices

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24 Apr 2019

IP Australia, EUIPO and UKIPO ranked most effective IP offices

A new survey conducted by WTR has found that IP Australia is the IP office most lauded by trademark practitioners around the world. However, users raised concerns with operations at a number of IP offices. Read more

23 Apr 2019

Turkey trademark uplift, INPI announces Africa IP adviser, and China counterfeit crackdown: news digest

In our latest edition, we look at INTA and the National Trade Foundation for Education partnering up to spread the anti-counterfeiting message, a study highlights how brands need to showcase their authenticity, and much more. Read more

5 Apr 2019

How South Africa’s predicted economic upswing will create opportunities for brands and their advisors

The country is seeing increased interest from international entities - particularly from the US; this will likely grow in scale as not only the South African economy develops, but as other emerging markets on the African continent grow.  Read more

5 Apr 2019

China data to TMview this year, Brazil moves closer to Madrid, and Beckham versus Inter Milan: news digest

In our latest round-up, we look at luxury brands focused on Chinese e-commerce platforms, IP Australia opening a public consultation on fees, Red Points receiving funding injection, and much more. Read more

Online

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14 Mar 2019

China’s new E-commerce Law

China’s new E-commerce Law (which entered into effect on 1 January 2019) regulates a wide array of matters, including antitrust, data protection, consumer protection, payment and delivery services, among others. However, the law’s provisions on IP protection seem to have attracted the most attention – both positive and negative. Read more

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

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

Portfolio management

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20 Apr 2019

Luxury companies are edging into the travel industry, but a high-end reputation is not everything

LVMH’s purchase of Belmond reflects an ongoing trend in the luxury market towards the travel industry. However, brands must be wise in this transition as there are endless opportunities for reputational damage. Read more

11 Apr 2019

Video game industry may face digital overhaul, but Nintendo can always call upon Mario

Big Tech has dipped its toes into the industry, posing a risk to traditional manufacturers. We take a deep dive into one of the market’s biggest players, Nintendo, to understand how its brands have helped the company sustain its success. Read more

9 Apr 2019

Trademark squatter defeated by US pet food brand’s prior reputation, with Taobao’s assistance  

In Elma v Shen Pengwei, online shopping platform Taobao has offered its assistance to collect data relating to the sale of US pet food manufacturer MI Industries’ products by retailers in order to defeat an infringer. Read more

5 Apr 2019

Beijing High Court rejects Thermos’ appeal in invalidation proceedings

The Beijing High Court has put an end to Thermos’ efforts to invalidate the mark TILIR THERMO VOGUE, registered by a Chinese company over a decade ago for goods in Class 21, including vacuum bottles.   Read more

Trademark law

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1 May 2019

Registration: tips on securing your mark in China

One of the most common issues faced when securing protection in China is the earlier registration of third-party rights, which are then cited against the later application. However, there are various tactics that can be adopted to overcome this hurdle. Read more

1 May 2019

Protection for non-traditional trademarks lags behind in China

Although China recognises non-traditional marks, it is still rare for them to secure protection. Nevertheless, the situation and the market are improving and applicants will one day be able to effectively protect their rights in all types of trademark in China. Read more

26 Apr 2019

New law requires intent to use for trademark applications and makes significant changes to trademark enforcement

The Standing Committee of the 13th National People’s Congress has recently adopted amendments to China’s Trademark Law. One of the main changes is that it will be possible to reject a trademark application on the basis that it has been filed in bad faith and without an intent to use. Read more

24 Apr 2019

“Pioneering at a global level” – China approves amendments to tackle bad-faith filings

China’s legislature has approved amendments to the country’s trademark law, which includes a raft of changes, including empowering administrative authorities to reject malicious applications and impose fines against bad-faith filers and their agents. Read more

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Lucy Walker
Partner
Birmingham, United Kingdom
Barker Brettell