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01 May 2018

Key tips for trademark licensing in China

Before signing a trademark licence agreement, rights holders should ensure that they have a strong risk-prevention strategy in place, in order to benefit as either a licensor or a licensee.

01 May 2018

Trademark licensing in Canada: control is key

The upcoming amendments to the Trademarks Act may bring short-term uncertainty over ownership and licensing issues. One thing that is unlikely to change is the established principle of proving a licensor’s control over a mark.

01 May 2018

The rise of licensing in India

Advancements in technology and expanding marketplaces have been key to successful licensing programmes in India over recent years. Local trademark owners and licensees should now follow in the footsteps of international brands and adopt licensing as a core revenue stream.

01 May 2018

Licensing in Italy: how to prove a non-written agreement

Trademark licensing is recognised under Italian law despite the absence of specific legislation governing agreements. When it comes to enforcement, licensees can provide evidence of a non-written agreement through various means.

01 May 2018

Case law as a guide to trademark ownership, licensing and enforcement

Under common law, ownership is conferred through first use of a trademark – including use by a licensee. Recent case law can help to determine which party has the right to enforce the licensed mark where an infringement suit arises.

01 May 2018

Know your exploitation rights: how to make and enforce a Russian trademark licence

Foreign brand owners are free to enter into direct or indirect trademark licensing agreements in Russia. However, in order to be valid and enforceable, these agreements must contain key terms and be recorded with the Federal Service for Intellectual Property.

13 March 2018

Managing a pharmaceutical trademark portfolio with the assistance of outside counsel

Responsibility for a company’s portfolio is frequently placed in the hands of a few specialists. Often, this is not the only task carried out within the department. However, the legal protection of trademarks requires a high degree of specialisation.

13 March 2018

Procedures and strategies for pharmaceutical brands: Brazil

Brazil is a first-to-file jurisdiction, and therefore IP rights are acquired only when an application is filed and registered with the Brazilian Patent and Trademark Office. However, pharmaceutical trademarks fall under two separate and independent statutory regimes.

01 March 2018

To play or not to play (the waiting game) in Canada?

With the new Canadian trademark regime on the horizon, rights holders should consider whether to wait or to implement a filing strategy before the present system becomes a thing of the past.

01 March 2018

Turkey welcomes letters of consent

Pursuant to the new Industrial Property Law, similar or identical trademarks will no longer be considered absolute grounds for refusal if applicants submit a letter of consent for use from the prior owner.

01 March 2018

Top tips for trademark registration in India

India: The Trademarks Registry has implemented various changes to enhance the trademark filing system in India. An efficient registration strategy should help rights holders to reap the benefits of these updates.

01 March 2018

All thought and no action is a losing combination in China

Having a thorough knowledge of the trademark filing system is key to obtaining IP protection, but knowing what to register is only the first step to ensure that the process runs smoothly.

28 February 2018

Data protection: WHOIS ready to enforce your trademarks?

Privacy advocates hail the new General Data Protection Regulation as a big step forward in the protection of personal data against misuse and abuse by commercial interests. But how does our increasingly global internet-based society deal with bad actors, including criminals, in the face of these new privacy protections?

28 February 2018

Domain management: a best practice guide

The first step in an intelligent domain strategy is to look at trademark registration strategy. What has been registered and where? Is there a pattern of registration in the trademark system that can be duplicated in the domain name system? 

28 February 2018

Navigating the evolving landscape of social media

Although it is a hard truth that we must learn from our mistakes, it is also equally true that we can learn from the mistakes of others. Thus, it is essential for brands to learn from the failures and successes of the approaches adopted by their competitors in tackling online abuse in the social media environment.