Japan

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.

Arrest over fake Tokyo 2020 medals; counterfeit lemons seized; Indonesia trademark rise – news digest
Colour trademarks in Japan: <em>Hitachi</em> decision highlights obstacles for brands
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.

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

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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

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

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

Anti-Counterfeiting

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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

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

Brand management

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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

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

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

Enforcement and Litigation

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15 Nov 2019

Recent design revisions in Japan

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15 Nov 2019

Protecting and enforcing design rights: Japan

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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

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

Government/Policy

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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

4 Jan 2019

Trolls on the rise, Brexit disruption and China’s domination: data trends of 2018

Having just rung in the new year, it is the perfect time to look at the trends which have characterised the trademark landscape in 2018, and discuss what is to come in 2019. Read more

4 Dec 2018

AI examinations and a new manual: the JPO end of year review

It has been another busy year for the trademark division at the Japan Patent Office, especially in the development of examinations. Read more

30 Nov 2018

Finnish IP office launches chatbot, Lazada signs MOU and JPO fakes campaign: news round-up

In our latest round-up, we look at luxury brands avoiding Black Friday discounts, Edible Arrangements filing a trademark lawsuit, a huge counterfeit haul in Paraguay, and much more. Read more

Law Firms

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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

3 Jun 2018

Japan’s filing trends are distorted by a single applicant, while brands plummet in value: exclusive data analysis

In this week’s country data report, we highlight Japan’s unusual distribution of applications by trademark class, analyse the volatile values of the leading Japanese brands, and much more.

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3 Oct 2017

MLB’s top TTAB user, Thai IP Office gets an upgrade and Russia to introduce “Made in Prison” label: news round-up

In this news round-up, we look at how India may remove the controversial Goods and Services Tax exemption for unbranded food products and how the Chicago Cubs are tackling an increase in counterfeiting. Read more

IP Offices

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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

6 Apr 2018

Trademark offices prepare for the future as users give poor performance grades

The performance levels of the Chinese, Brazilian and Indian trademark offices have clear room for improvement but change could be afoot. Read more

1 Mar 2018

Registries are alive with the sound of trademarks

Registrations for sound trademarks are becoming more prevalent at major IP registries around the world. We look at some of the opportunities for sound marks, as well as common challenges and how to overcome them.

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20 Apr 2017

Japanese trademark pendency times rise with registrations; interest in non-traditional marks cools

While the Japan Patent Office registered more trademarks last year than it has in almost a decade, new data indicates that it is also taking more time than ever before to decide whether applications should be granted or refused.

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Online

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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.

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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.

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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.

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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.

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Portfolio Management

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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

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

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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14 Dec 2017

International applications at an all-time high as Asia and Africa experience sharp rise in trademark filings

WIPO has released its latest report into global IP activity, revealing a significant rise in  filing activity. Most of the growth can be attributed to China’s continued domination. Read more

Trademark law

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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

24 Oct 2017

Apple and Samsung back in court, trademark preparation for Singles Day, and an NBA legend’s counterfeit haul: news round-up

In the latest round-up, we look at the next step in a long-running IP feud between Apple and Samsung, a call for plain packaging in United Arab Emirates, and much more. Read more

20 Jun 2017

Can you register a parody trademark?

The registrant in a recent case registered the trademark FRANCK MIURA in Japanese katakana and Chinese characters with regard to its lookalikes of Franck Muller's well-known luxury watches. However, the design similarities were not at issue in this case. Rather, the case centred on the similarity of, and the likelihood of confusion between, the trademark and three prior FRANCK MULLER marks.

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7 Apr 2017

Trademark registrations up, designs down as the Japan Patent Office reveals the top registrants for 2016

The Japan Patent Office received its highest number of trademark applications in 10 years during 2016, according to the agency’s latest annual report. Of the top 10 registrants last year, nine were Japanese entities (the exception being South Korea’s LG Electronics).

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Find an expert

Siew Ling Lee
Department Head - Legal & Consulting
Petaling Jaya, Malaysia
Advanz Fidelis IP Sdn Bhd