The Trademark Lawyer Issue 1 2022
The value of peer support

The value of peer support

We all know the phrases ‘a problem shared is a problem halved’ or ‘it’s good to talk’ but the benefits in talking about how you are feeling go far beyond this. When we are in a difficult situation we lose our problem-solving abilities, it can be impossible to focus...

Mental Health Awareness Week – Loneliness

Mental Health Awareness Week – Loneliness

Humans are hard-wired to connect - we are tribal and social animals. We are biologically programmed to need other humans, and a feeling of belonging and connection drives our happiness. Despite this many of us will know what it’s like to be lonely, especially after...

HGF announces 8 new Partners

HGF is delighted to announce that from 1st May 2022, the following 8 people have been promoted to Partner. Jerry Bretherton Michelle Davies Rebecca Field Adam Hines Nathan Hinks Matthew Johnson Simon Turberville Dan Woollaston Martyn Fish, CEO commented “It is my...

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HGF announces 8 new Partners

HGF is delighted to announce that from 1st May 2022, the following 8 people have been promoted to Partner. Jerry Bretherton Michelle Davies Rebecca Field Adam Hines Nathan Hinks Matthew Johnson Simon Turberville Dan Woollaston Martyn Fish, CEO commented “It is my...

read more

The value of peer support

We all know the phrases ‘a problem shared is a problem halved’ or ‘it’s good to talk’ but the benefits in talking about how you are feeling go far beyond this. When we are in a difficult situation we lose our problem-solving abilities, it can be impossible to focus...

read more

Mental Health Awareness Week – Loneliness

Humans are hard-wired to connect - we are tribal and social animals. We are biologically programmed to need other humans, and a feeling of belonging and connection drives our happiness. Despite this many of us will know what it’s like to be lonely, especially after...

read more

The Magic of the ‘MOMENT’

In a clash between Magic Moment and Evening Moment, the Hon’ble High Court of Delhi has passed an injunction order against Sarao Distillery (OPC) Pvt. Ltd & and Greentech Blenders and Distillers (“Sarao Distillery & Anr.”) forcing them to stop selling its own...

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Forresters doubles Munich office space to support growth

IP firm Forresters has moved to larger offices in Munich to support its plans for growth. Forresters has taken a larger 335 sq m [3,600 sq ft] space at the Skygarden, doubling its existing presence in the same building on Erika-Mann-Str. The new office can accommodate...

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Three new promotions for Fox Williams

City law firm Fox Williams has announced three promotions. which take effect from 1 May 2022. Evie Meleagros and Sarah Redmond are promoted to partner, and Rebecca Richardson is promoted to legal director. The promotions follow continued growth at the 39-partner and...

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World IP Day, 2022

This year, World IP Day focuses on “IP and Youth: Innovation for a Better Future”. In a post-COVID-19 era driven by the growth and encompassment of technology, many aspects of innovation are changing. To mark the occasion, we asked our editorial board to reflect on...

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IP Professionals’ Brand New Initiative to Benefit Ukraine

When the Russian invasion of Ukraine began, Taras Kulbaba—a Ukrainian-born IP attorney living in Brussels—could not sit idly by. He gathered resources from his friends and colleagues, purchased first-aid and medical supplies, and personally drove the kits over a...

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New CITMA President elected

Rachel Wilkinson-Duffy has been elected as The Chartered Institute of Trade Mark Attorney’s (CITMA) President. Rachel, who is a partner at Baker McKenzie, begins her two-year term in the role immediately. She was voted in unanimously by CITMA’s Council and succeeds...

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Red Bull’s wings clipped by Indian Court in trademark row

Red Bull suffered defeat in a recent trademark case before the Delhi High Court when they attempted to seek an injunction against PepsiCo India and its energy drink “STING” for alleged infringement and passing off. Red Bull’s application was based on the purported...

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An interview with Fiona Scott, Trademark Paralegal at Amazon

Fiona sits down with The Trademark Lawyer to discuss her experiences as a paralegal at Amazon, Amazon’s protection procedures, and her hopes for the future of the trademark industry.

NFTs – protection of trademarks in the realm of blockchain

Max Vern, Partner and Head of the International Department at Amster, Rothstein & Ebenstein LLP, concentrates on the practical aspects of the NFT phenomenon which is engaging trademark rights holders on a magnitude rarely seen before.

Aping rights is never boring

Dominic Farnsworth, Glenn Pudelka and Neale Christy of Locke Lord discuss the intersection of IP law and NFTs.

The Canadian trademark ecosystem: 10 things you absolutely need to know

Micheline Dessureault, Caroline Guy, Johanne Muzzo and Simone Ndiaye of Therrien Couture Joli-Coeur LLP illustrate the importance of seeking specialist Canadian advice with an overview of 10 idiosyncratic jurisdictional practices.

Protecting trademark rights in China: OEMs

Wei He, Trademark Attorney at Beijing Sanyou Intellectual Property Agency Ltd., explains the elements that must be considered by Original Equipment Manufacturers making and exporting goods from China to ensure protection against infringement if entering the Chinese market in the future is a possibility.

Weeding out imposters: when cannabis brands name themselves after well-known children’s brands

Stacey C. Kalamaras and Luke S. Zimmerm discuss recent cases and evaluate the risk to consumers when cannabis companies copy well-known children’s brands and candy packaging and address how state and federal laws are used to combat these labeling issues.

Passing off remedy broader than infringement

Manisha Singh and Malyashree Sridharan of LexOrbis evaluate the difference between a passing off case and an infringement case with key takeaways for considering the protection of a product versus a mark.

Parallel imports vs Counterfeits: Mechanisms of preventing Intellectual Property Rights infringement in Azerbaijan

Shabnam Sadigova Huseynova and Nargis Tagiyeva of GRATA International, Azerbaijan, detail customs registration, unfair competition complaints, and civil protection as preventive measures against parallel imports and counterfeit goods.

The current practice of applying monetary sanctions to protect the exclusive right to a trademark

Sergey Zuykov, Managing Partner of Zuykov and partners, provides a case-based analysis for successful recovery of damages for trademark infringement.

Lo and behold! CNIPA has issued Standards for Judging General Trademark Violations

Aimin Huo, Trademark Attorney at CCPIT Patent and Trademark Law Office, reviews the new standards implemented as of January 1, 2022 for judging trademark violation in China.

Why do some find it so attractive to copy a famous mark?

Colmenares & Asociados’ Trademarks General Manager Luis Gayoso Frayssinet provides an overview of why copying a famous mark is attractive but, ultimately, a detrimental decision.

The birth of Azami Global: tech-enabled global IP expertise

Jeremy Goldberg and Lauren Pick, co-CEOs, sit down with The Trademark Lawyer to discuss the formation of Azami Global, the vision for the company, and the benefits it is already offering to its members.

Women in IP Leadership: An interview: inspirations, experiences, and ideas for equality.

Featuring: Klaudia Błach-Morysińska of Zaborski, Morysiński Adwokacka Spółka Partnerska

Sponsored by: Fenix Legal

Women in IP Leadership: An interview: inspirations, experiences, and ideas for equality.

Featuring: Elena Zuykova of Zuykov and partners

Sponsored by: Fenix Legal

Jurisdictional briefing: practical aspects of combating counterfeit goods in Poland

Małgorzata Kutaj, Attorney-at-law at Traple Konarski Podrecki and Partners, provides a brief overview of when protection can be obtained against counterfeit goods and why this is crucial.

Jurisdictional briefing: Tinder takes a SWIPE at its competition in Spain

Alfonso Sabán and Álvaro Piacente of H&A examine the trademark battle between rivals Tinder and Bumble that has left one competitor wanting more!

Jurisdictional briefing, US: Don’t forget the NFTs: IP due diligence for emerging technologies

Michelle Ciotola and David Kincaid of Cantor Colburn evaluate the expectations for how the USPTO will handle IP due diligence for an exciting, if not emerging, technology.

ECTA 40TH Annual Conference: ‘Designing the Future’

Another extraordinary ECTA Conference is coming up soon, on 15-18 June 2022. You may expect great guests and speakers and a very engaging programme with informative sessions, lively discussions, exciting gatherings and Saturday excursions. New to this year’s format: first-time attendee reception, In-House counsel breakfast, Friday pass, online kick-off workshops, and tailored workshops for young professionals. Register by 21 April to get the Early Bird fee!

Haloo brings trademarks into the digital age

Find out how Haloo, a tech-based start-up, is transforming the trademark search and application process via digitalization and the of leveraging AI to save time and resources with nigh-on fail-safe results.

Splitting your brand name

Safir Anand, Senior Partner and Head of Trademarks, Contractual and Commercial IP at Anand and Anand, provides a guide for understanding the pros and cons involved in splitting one’s brand.

The Madrid System: who is new? And what is next?

Francesco Bonini, Trademark and Design Attorney, provides an update on the Madrid Protocol with predictions of who may join next and what developments may be on the horizon.

European Union trademark legislation: an overview on restoration of rights

Júlia Alves Coutinho, Trademark and Patent Attorney at Inventa, explores the requirements for restitutio in integrum and the importance of a well-founded request.

Trademark disclaimer in Brazil: how to deal with possible vulnerabilities applied to registrations?

Savana de Castro Castilho and Jessica Guimarães Almeida of Vaz e Dias Advogados provide advice for protection under the broadened statement for disclaimers under Resolution 166/2016 adopted by the Brazilian Trademark Office.

A Polish perspective on effective negotiations as an increasingly common means

Nina Jankowska, Trademark Attorney at Patpol, gives her opinion and provides tactical advice for negotiation as a form of dispute resolution in Poland.

Protection of three-dimensional marks in Russia

Alina Grechikhina, Trademark & Design Attorney at Gorodissky & Partners, reviews the criterion for protecting three-dimensional marks in Russia.

Diversity, equity, and inclusion with Suzanne Wertheim. Chapter 6: tips for awareness and self-improvement.

In this six-part series Dr. Suzanne Wertheim, of Worthwhile Research & Consulting, talks to The Trademark Lawyer about diversity, equity, and inclusion: what it means; the current challenges; DEI in law; gender bias; and what we can all do to improve.

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