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Trademarks during covid: exclusive insights from law firm experts in China and Japan

WTR presents insights on how the events of 2020 shaped the trademark practice of Hu Gang in China, and Tomoe Takahashi and Mikako Tsukada in Japan.

1 Dec 2020

BrewDog trademark dispute regret; CJEU rejects wine bottle; Clarivate acquires Hanlim IPS – news digest

In our latest round-up, we look at spoon-bender Uri Geller giving his permission to use a Pokemon after a two-decade dispute, Spin Master signing a licensing deal with Warner Bros, and much more.

10 Nov 2020

Supreme brand sold; Oatly trademark rejected; Panasonic launches anti-counterfeiting campaign – news digest

In our latest round-up, we look at Saturday Night Live riffing on the retirement of brand mascots, the American Retirement Association prevailing in an acronym dispute, and much more.

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4 Jan 2021

Five years on: the current state of non-traditional marks in Japan

Half a decade after the law was changed to allow the registration of non-traditional marks, application numbers have dropped dramatically. A breakdown of the figures and exclusive insight from representatives of the Japan Patent Office provide clues as to the future of such marks in the country. Read more

13 Oct 2020

Coca-Cola brand purge continues; TikTok star in Nintendo trademark spat; EUIPO scam alert – news digest

In our latest round-up, we look at the US Department of Homeland Security investing in an anti-counterfeit blockchain start-up, a next-generation trademark status tool launching, and much more. Read more

1 Oct 2020

Amazon expands Transparency in Asia-Pacific, provides update on counterfeit interceptions

Amazon has announced the expansion of its Transparency product serialisation service to Australia and Japan. Read more

23 Sep 2020

A year of change and growth at the Japan Patent Office

The past 12 months have been challenging for all national IP offices, but the Japanese registry has overcome major hurdles while seeing a rise in trademark filings and implementing significant changes. Read more

Anti-Counterfeiting

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7 Aug 2020

Arrest over fake Tokyo 2020 medals; counterfeit lemons seized; Indonesia trademark rise – news digest

In our latest round-up, we look at the Chinese government bringing live-streaming for IP services to Douyin (the Chinese version of TikTok), a shipment of counterfeit belts being seized in Louisville, and much more. Read more

2 Jun 2020

John Oliver UFC trademark brawl; Brighton FC criticised over filing; Nestlé rebrand – news digest

In our latest edition, we look at Amazon's latest pharmaceutical trademark bid in Australia, the USPTO and the Japan Patent Office issuing a joint statement, and much more. Read more

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

17 Mar 2020

Trademark procedures and strategies: Japan

The Trademark Act and its related regulations govern the registration and protection of trademarks in Japan. Read more

Brand management

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21 Sep 2020

Super Mario at 35: brand lessons from Nintendo’s iconic mascot

As Nintendo’s famous mascot Mario celebrates its 35th anniversary, WTR looks at what brands can learn from the mustachioed hero. Read more

27 Jul 2020

Colour trademarks in Japan: Hitachi decision highlights obstacles for brands

A recent decision at the Japan IP High Court has shone a spotlight on the difficulty of obtaining registered trademark protection for non-traditional marks in Japan. Read more

24 Apr 2020

Lessons from the Cooking Mama: Cookstar licensing fiasco

The release of a new edition in the popular Cooking Mama video game franchise has been mired in controversy and confusion in recent weeks, with tensions rooted in a licensing dispute. 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

Enforcement and Litigation

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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

28 Jan 2020

Japan Patent Office launches Trademark Fist, IP firm coronavirus response, and EUIPO updates Brexit information: news digest

In our latest edition, we look at Pablo Escobar’s IP being put up for sale, the Singapore registry visiting Turkey, Malta joining DesignClass, the Tajikistan IP Office giving its annual trademark update, and much more. Read more

14 Jan 2020

Amazon law enforcement data pledge, Muji trademark blow, and Lazada IP takedown stats: news digest

In our latest round-up, we look at Italian football club Fiorentina taking the lead in blockchain anti-counterfeiting, a SUSSEX ROYAL application being filed at the USPTO, the EUIPO launching its annual user satisfaction survey, and much more. Read more

20 Dec 2019

Relief for Japan Patent Office as “best troll” Ikuhiro Ueda drastically slows trademark filing activity

The world’s most prolific trademark filer, Ikuhiro Ueda, has slowed his activity in recent months. Experts tell WTR that the slowdown will “recover reliability” in Japan’s trademark system, but there is uncertainty whether it is permanent. Read more

Government/Policy

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15 Nov 2019

Recent design revisions in Japan

29 Oct 2019

Groundbreaking research reveals significant risks in AI analysis of trademark registers

A new study looking at how AI is used by IP offices warns that “the seductive appeal of the all-seeing algorithm should be resisted” due to current limitations. Read more

1 Oct 2019

Asia’s top filers reveal strong growth prospects

World Trademark Review takes a deep dive into the top Asia-Pacific trademark offices and how they are modernising their systems to better protect applicants and streamline procedures. While this has positively affected filing levels, economic performance and domestic businesses will be key going forward. Read more

9 Sep 2019

No safe bets – what the potential Philip Morris-Altria merger tells us about the tobacco industry

Major players are pulling out all the stops to diversify their portfolios, expanding geographically as well as investing in and buying up other businesses. However, no matter how you look at it, there are significant challenges ahead. Read more

Law Firms

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23 Sep 2020

Flying high: registry data shows Asia-Pacific filings are skyrocketing

Filing data at the top Asia-Pacific IP offices reveals a region undergoing spectacular growth, accounting for a colossal 80% of trademark activity worldwide last year. Spearheading the effort is China – a nation with increasing influence over its neighbours, which shows no signs of slowing down. Read more

28 Aug 2020

Economies are battered but many major offices set for record trademark numbers

As the data continues to be updated, we are able to get a better understanding of the extent of the coronavirus’ impact on the trademark ecosystem. 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

2 Nov 2018

Azerbaijan pledges IP reforms, plain packaging in Singapore, and Ecuador plans mediation center: news round-up

In our latest round-up, we look at the JPO offering a souvenir certificate for long-time rights holders, fashion brands stepping up their tech game, a new director at the Tunisian IP Office, and much more. Read more

IP Offices

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21 Sep 2020

China eclipses United States in latest Asia-Pacific filing figures – with Alibaba top of the pile on home turf

WTR crunches the numbers at the leading Asia-Pacific trademark offices to reveal the extent of China’s emergence as a regional superpower, with Alibaba leading the way among both agent and corporate filers at its home registry. Read more

14 Sep 2020

Japan Patent Office vows to improve examination pendency

With the average wait time from application to final examiner decision almost doubling in the space of five years, the Japan Patent Office has set itself a new target and implemented much-needed measures to improve examination pendency in the region. Read more

5 Jul 2019

New JPO commissioner, USPTO updates scandalous guidelines, and Kardashian copycat lawsuit: news digest

In our latest round-up, we look at IP Australia announcing examination delays, the Portuguese registry updating its fees, the Crips street gang apologising for a trademark dispute, and much more. Read more

12 Apr 2019

Serial trademark filer Ikuhiro Ueda speaks out: “I am the best troll”

Yesterday we reported on notorious trademark filer Ikuhiro Ueda, who has personally filed over 100,000 trademark applications. Today, in an exclusive interview with WTR, Ueda claims his filings are part of an ambitious plan to overhaul the global IP system. Read more

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13 Sep 2016

Pokémon GO illustrates the power of AR: what it means for trademark counsel

While still in its nascent stages, the success of Pokémon GO has provided a glimpse into the potential of augmented reality (AR) – and if the technology goes truly mainstream, there will be a direct impact on the work of trademark counsel. A new study from Perkins Coie and virtual reality proponent Upload takes a look at industry expectations for AR and virtual reality.

10 Sep 2002

MP3.com loses fight for transfer of 'mp3.co.jp'

The Tokyo District Court has ruled that System KJ, a Tokyo developer
of equipment for personal computers and communication devices, may use its 'mp3.co.jp'
domain name despite a claim against it by MP3.com Inc, an online music distributor
based in California. The court ruled that System KJ obtained the name without
bad faith.

28 Mar 2002

Japan's country code to be operated by ICANN

Japan's country-code top-level domain is to be operated by ICANN. The
owner of '.jp' is only the second to agree to recognize ICANN's authority as
internet policymaker since country-code owners voted in June 2001 to withdraw
from ICANN.

3 Jul 2001

J-Phone triumphs in landmark cybersquatting case

For the first time ever, a Japanese court has awarded damages in a domain
name dispute. Whether the precedent in the <i>J-PHONE Case</i> will be followed
in future is questionable, however, as Japanese law is based on the civil law
system.

Portfolio Management

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15 Nov 2019

Protecting and enforcing design rights: Japan

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

11 Apr 2019

The Ueda Files: the world’s most prolific trademark filer and a conundrum for brands

An incredibly prolific trademark filer in Japan, Ikuhiro Ueda, is causing headaches for brands, according to experts. In an exclusive investigation from WTR, we reveal the staggering scope of this portfolio-building exercise. Read more

1 Feb 2019

Asahi’s acquisition of Fuller’s shows value of brands in overseas expansion

This Japanese company's purchase is only one of a number of deals in the industry, with key players bolstering their premium beer portfolios. Read more

Trademark law

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25 Jan 2019

JPO apologises for data leak, Brunei joins TMview, and Absolut accused of trademark bullying: news digest

In our latest round-up, we look at the Japan Patent Office apologising after an accidental data leak, a sauce company suing Wendy’s, counterfeit fans reacting to Alibaba’s latest Taobao claims, and more. Read more

12 Sep 2018

Trademark procedures and strategies: Japan

The Examination Guidelines for Trademarks also play an important role in the examination of trademark applications at the Japan Patent Office (JPO). The most recent revisions to the examination guidelines took place in April 2017, which include clarifying the criteria for judging the similarities between trademarks. Read more

19 Jul 2018

Well-known marks: multijurisdictional approaches to fame in Asia

Different approaches must be used to secure protection for well-known marks in different countries. This article considers the best route in key Asian jurisdictions. Read more

5 Jul 2018

Federer logo clash with Nike highlights contractual pitfalls for sports stars

This week the Wimbledon tennis tournament got underway, with media reports noting how reigning champion Roger Federer “stunned onlookers by turning out on Centre Court in Uniqlo gear”. The focus then turned to the absence of his often-used RF logo, which is caught up in an ownership wrangle.

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26 Jan 2021

@WTRmagazine In case you missed it: WTR's latest magazine 'USPTO Filings Scale New Heights' is online now. Read it here:… https://t.co/B01AidjxzU Read more

25 Jan 2021

@WTRmagazine RT @WebTMS: Donald #Trump's plans to create his own breakaway political party could face a hurdle if he plumps for "The #Patriot Party" as… Read more

25 Jan 2021

@WTRmagazine Donald Trump’s Patriot Party: prior trademarks could be “significant hurdle” to new political venture.… https://t.co/sRk9IwY0gt Read more

25 Jan 2021

@WTRmagazine EUIPO filings in 2020: all the key stats and figures you need to know. https://t.co/rdvDOe73uW https://t.co/7f0pOxf9r2 Read more

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Cesare Galli

Senior Partner

Milan, Italy

IP Law Galli

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Japan

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Anti-Counterfeiting

Brand management

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Portfolio Management

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