Market Insight

Updates from an international team of correspondents who report on recent developments in trademark law and practice in their home jurisdictions, as well as strategic issues and those relating to brand protection, portfolio management and value creation.

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India

New 05 SEPTEMBER 2024

Lacoste wins long-standing trademark infringement battle at the Delhi High Court

After a dispute spanning 23 years, the Delhi High Court has ruled in favour of Lacoste and permanently restrained sports fashion brand Crocodile International from using its standalone crocodile logo in India. The decision sheds light on territoriality of trademark rights when it comes to international coexistence agreements.

29 AUGUST 2024

Bollywood singer prevails in first AI voice-cloning infringement decision in India

The Bombay High Court has ruled in favour of Bollywood celebrity Arijit Singh in an infringement dispute. This first-of-its-kind decision will be critical for future personality rights protection cases in India as it highlights the growing need to reconcile IP rights with the evolving capabilities of AI.

15 AUGUST 2024

ASCI report indicates need for stronger scrutiny and regulation in healthcare advertising

The ASCI’s Annual Complaints Report 2023-2024 reveals crucial insights into brand advertising campaigns in India, with 98% of scrutinised ads requiring modification. Misleading ads present a challenge for law enforcement and brands must adhere to court rulings or else risk the suspension of their manufacturing licences.

China

15 AUGUST 2024

What companies can do to safeguard brand image in China as traditional protection evolves

While trademarks form the foundation of brand protection, a changing market calls for a multifaceted approach to safeguarding IP rights. Technological advancements and sophisticated counterfeiters necessitate a more proactive strategy that incorporates trademarks, digital timestamps, patents and copyrights.

08 AUGUST 2024

How to navigate substantive change and bad faith when it comes to refurbished goods in China

With no fixed guidance in judicial practice, what constitutes substantive change on a refurbished product can be difficult to define. However, analysis of jurisprudence in previous cases sheds light on how rights holders can avoid potential pitfalls when it comes to proving bad faith. 

01 AUGUST 2024

How to draw a firm line between refurbishment and infringement in China

Products that are refurbished without authorisation can be a problem for rights holders looking to safeguard their brand image. It is therefore crucial to understand what constitutes infringement when it comes to refurbished goods.

Western Balkans

04 JULY 2024

How to navigate provisional refusals in the Western Balkans

When it comes to provisional refusals of trademark registrations in the Western Balkans – whether they are based on absolute grounds or an opposition – it is crucial for rights holders to understand the legislative processes and timeframes during which to respond across the different jurisdictions to avoid delays. 

28 MARCH 2024

Oppositions in the Western Balkans: what rights holders need to know

When it comes to defending against trademark registrations that could threaten market exclusivity, oppositions are a viable option. There are various legislative processes that potential opponents should be aware of if they wish to commence proceedings in the Western Balkans.

07 MARCH 2024

Filing and maintaining trademarks in the Western Balkans: what rights holders need to know

For rights holders that want to protect their trademarks in the Western Balkans, it is crucial to understand the laws that govern trademark filing and maintenance processes across the region.

USA

06 JUNE 2024

Declaration from director of opposing company deemed sufficient evidence of prior use by PTAB and Federal Circuit

A design and standard character mark infringement dispute has highlighted the validity of a declaration as evidence. While the defendant argued abuse of discretion by the PTAB, the Federal Circuit disagreed and supported a declaration from the director of the opposing company as sufficient for refusal to register. 

30 MAY 2024

Third Circuit vacates district court’s grant of relief in charity infringement dispute 

In a long-running trademark spat between two children’s education charities, the Third Circuit has ruled that the district court erred in granting relief to the plaintiff. Its decision sheds light on the impact of a delay in bringing a suit as well as where the burden of proof lies.

23 MAY 2024

District court erred in granting preliminary injunction, Second Circuit rules

In an infringement spat between the Fire Department of New York and a first responder, the Second Circuit overturned a district court decision to grant a preliminary injunction. The ruling highlights the importance of the differences between descriptiveness and secondary meaning under the Lanham Act. 

Turkey

09 MAY 2024

How the concept of the relevant consumer could shift in the metaverse under the Turkish classification system

While revised guidelines from the Turkish Patent and Trademark Office aim to distinguish between types of consumers when it comes to buying goods and services, the metaverse raises questions about how to apply the guidance to classes of products and trademarks in the virtual space.

11 JANUARY 2024

Cancellation actions could surge as TÜRKPATENT and Court of Appeal remain at odds over acquired rights principle

Decisions from the Turkish Court of Appeal and the Turkish Patent and Trademark Office highlight practical differences between the two organisation’s processes. It is crucial for rights holders to understand these differences in order to best strengthen claims going forward.

31 AUGUST 2023

Turkish government increases fees and VAT rates for IP services

Companies and foreign rights holders must review their budgets and financial strategies to effectively accommodate changes to official fees and VAT rates. Adapting to these revised increases will help businesses to ensure compliance and avoid any potential penalties.

Scandinavia

04 JANUARY 2024

How amendments to the Trademark Act have helped align Norway with the rest of Europe

Amendments to the Norwegian Trademark Act, which entered into force on 1 March 2023, have brought the country into line with current European legislation and directives. Exploring some of these changes reveals how they may impact registration decision making.

15 JUNE 2023

Danish practice to align with EUIPO on following GI conflict over Scotch Whisky

A dispute involving the GI Scotch Whisky has led to a more harmonised approach between the DKPTO and EUIPO. It also highlights that consumer surveys are a powerful tool when evidence of public perception is required.

13 APRIL 2023

How evolving regulations are affecting trademark registrations related to NFTS and virtual goods and services in 2023

The publishing of the latest edition of the Nice Classification on 1 January 2023 provides clarity for applicants by highlighting disparities among the Scandinavian approaches to navigating trademark registration in digital marketplaces.

Taiwan

24 AUGUST 2023

Alternative methods to curb trademark squatting amid post-registration opposition abolition

A draft amendment to Taiwan’s Trademark Act is set to replace the post-registration opposition system with invalidation proceedings. It will introduce a trial and appeal board and will allow third parties to submit observations during the pre-registration examination process.

13 JULY 2023

Amended good-faith prior use clause could threaten predictability in trademark suits

An amendment to Taiwan’s Trademark Law will muddy the scope of protection provided by good-faith prior use. This may make it more difficult for defendants to argue legitimate use of marks and for courts to assess infringement.

11 MAY 2023

Wide-ranging draft amendment looks set to reshape trademark landscape

The recently passed draft aims to modernise the Taiwanese trademark regime, shaking up pre-existing policies with regard to applications, reviews, oppositions, cancellations and Customs proceedings.

Poland

20 APRIL 2023

Key amendments to Civil Code of Procedure alter interim injunction proceedings in trademark cases

Amendments accepted in March officially codify a mix of new and previously existing practices of Polish IP courts into law, affecting rights holders at each stage of interim injunction proceedings.

23 FEBRUARY 2023

McDonald’s reversal shines spotlight on proving genuine use in Poland

The EUIPO’s seismic cancellation – and eventual reinstatement upon appeal – of a McDonald’s registered mark highlights issues with Poland’s rules for proving genuine use.

02 FEBRUARY 2023

Patent Office’s e-platform is a hit with target audience

Three years since its debut, analysis of user rates clearly shows that the electronic services platform – a pivotal part of the office’s push for digitisation – continues to develop and help resolve users’ IP issues.

Switzerland

16 FEBRUARY 2023

How trademark use requirements influence permissible brand evolutions

To ensure the viability of their brand’s evolving intellectual property, it is crucial that Swiss trademark owners understand and comply with proper use guidelines regulating any changes to existing marks.

26 JANUARY 2023

How to protect trademarks against non-use effects in Switzerland

Understanding Switzerland’s particular trademark use requirements is crucial for rights holders developing their protection and defence strategies and for applicants hoping to secure their marks.

21 OCTOBER 2021

Swiss authorities relax examination practices for trademarks featuring a place name

With exceptions, it will no longer be a prerequisite to limit goods and services to their geographical origin for trademarks containing an indication of source. The Swiss Federal Institute of Intellectual Property appears to be becoming more flexible, aligning its approach with that of the European Union.

Belgium

31 MARCH 2022

More than a wine label when prestige is at stake

When a trademark achieves a reputation, owners can claim broader protection on goods and services not designated by their original registration. However, such brands also attract counterfeiters, which as the recent infringement of the PETUS mark shows, can damage reputation.

Canada

03 JUNE 2021

The burdens of popularity – Canadian examination times and new office practices

The first of a two-part article examining the Canadian Intellectual Property Office’s latest steps to address its ongoing backlog of applications examines recent practice notices aimed at increasing the speed and efficiency of domestic application examination.

19 NOVEMBER 2020

Bricks and mortar or is online in order? Federal Court of Appeal checks in to trademark use and hotel services

The Federal Court of Appeal has handed down its decision in Miller Thomson v Hilton Worldwide Holding LLP, which relates to a non-use cancellation proceeding against the WALDORF-ASTORIA mark. The decision helps clarify what it means to provide hotel and motel services in Canada.

12 NOVEMBER 2020

EMPOWER-ing trademark infringement claims against public authorities

A recent case demonstrates that public authorities can be held liable for trademark infringement, even where they have obtained protection for an official mark.

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