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Category Archives: Trademarks

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Opening the door for product placement in Hong Kong?

On 4 September 2017, the Communications Authority of Hong Kong (“CA“) announced that it will review the relevant provisions in the codes of practice governing indirect advertising and product/service sponsorship (commonly known as “product placement”) in television programmes. Currently, the rules for television advertising are contained in the Generic Code of Practice on Television Advertising

Mexico: Cost-benefit analysis in trademark protection – Interview

International clients in Mexico should be considering solid strategies to protect their trademarks in this jurisdiction. Finding a good adviser is essential, not just from the legal side but also from an industry sector perspective, with local experience. When taking the first step to secure protection in Mexico a frequent question is “how much is it going to cost me?”. On this point,

UK Supreme Court case: criminal sanctions for trade mark infringement

R v M; R v C and R v T The Supreme Court has held that the criminal sanctions under section 92(1) of the Trade Marks Act 1994 (“the Act”) will apply to the sale or so called “grey” market goods as well as counterfeit goods. The Supreme Court’s judgment, handed down last week, is

China’s OEM jurisprudence 1.5 years after the Pretul case: OEM use may still infringe upon Chinese trademarks

Original equipment manufacturing (OEM) is a business model whereby a trademark owner orders its products from a manufacturer, often located abroad, who manufactures and supplies products branded with the purchasers marks instead of his own marks. In China, which is often branded “the factory of the world”, OEM is big business. However, from a trademark

A step in the right direction: China’s TRAB launches new trademark review hearing system

Under the Chinese Trademark Law, the Trademark Review and Adjudication Board (“TRAB“) decides on review procedures filed against decisions by the Trademark Office. Up to date, these TRAB review procedures were strictly written procedures. Even though the possibility of holding a hearing was written into the existing legislation, hearings were in practice never held. This

Brand Benchmarking 2017 – The results are in…

We gathered responses from 200 brand owners from around the world – asking them how they create, clear, file, protect and enforce their trademarks. To enrich the benefits of the report’s findings for our clients we have analysed the data and included comments using a variety of differentiating factors, including trademark portfolio size, head office

IP Newsletter – French language/Français

Our Paris team is delighted to provide IP news and updates in French language. The latest edition, #15 from May 2017 can be accessed at the link below. Lettre d’actualité IPMT – Français (French language)

Hogan Lovells Recruits Akira Endo as Consultant

Hogan Lovells has recruited Akira Endo, former head of global brand legal management at Kao Corporation as a Consultant of the firm’s trademark practice. The appointment is a further step in enhancing the firm’s capabilities to provide services tailored to clients in Japan, including consulting services. Akira is a highly accomplished trademark professional with over

Trademarks 111: Our 2017 guide to the trademark application process around the world

Our IP group offers the 2017 version of this comparative guide which outlines the trademark application process in 111 countries around the world, broken down into regions, and covering areas such as Application, Examination, Opposition, Cancellation, and Renewal. Click the link below to register for your free copy of the full guide. Trademarks 111   This guide and other

Hard Rock Cafe II – Acquiescence in IP infringement cases

In part II of this IP Enforcement focus v-log (see part I), we talk about the topic of acquiescence in IP infringement cases using the example of the famous Hard Rock Cafe case in Germany. This case has shown that in merchandise cases the principle of acquiescence is only of limited value. Watch the v-log here   For

China: Whose voice is it? – The arbitral award is out… but the case is not concluded…

The Hong Kong International Arbitration Center (“HKIAC”) has recently issued its final award in the trademark litigation saga surrounding “The Voice of China” – which we first discussed here. This case is high-profile and interesting, because it involves parallel arbitral and judicial procedures (including a rare preliminary injunction) about the ownership of the rights in

Ted Mlynar speaking at ABA’s 2017 Blockchain Technology and Digital Currency conference

We are proud to contribute to the ABA’s 2017 Blockchain Technology and Digital Currency National Institute event taking place on April 10, 2017 in New York City.  The American Bar Association’s one-day conference is dedicated to analyzing emerging legal issues concerning blockchain technology and digital currencies. Hogan Lovells Partner, Ted Mlynar, will be presenting as part

New on LimeGreen IP Know-how: Trademark opposition, invalidity and revocation guides

We’ve added three new topics to our free LimeGreen IP know-how resource focused on guiding you through trade mark opposition, invalidity and revocation proceedings. Who can file such proceedings, where and when? Can proceedings be avoided through amicable settlement? What about proving use or the risk of groundless threats? The new sections cover these issues and more in the following jurisdictions, with more

IP Newsletter – French language/Français

Our Paris team is delighted to provide IP news and updates in French language. The latest edition, #14 from March 2017 can be accessed at the link below. Lettre d’actualité IPMT – Français (French language)

Every cent counts: China slashes certain IP application fees as of 1 April

Reduced filing fees finally come to China! On 15 March 2017, the National Development and Reform Commission and Ministry of Finance jointly issued a notice (财税 [2017] No.20, “Notice”) to reduce filing fees for various IP registrations.  The reduced fees came into force on 1 April 2017. The reduced or waived administrative fees will certainly be beneficial for

Brexit webinar – What’s next for Life Sciences companies?

With the UK Government having issued its Article 50 notice, we are holding a webinar to further analyse the implications for the life sciences sector of the momentous decision that the UK has made to leave the EU. On 3 April 12:00 pm BST and 5 April 4:00 pm BST, our Life Sciences lawyers Charles Brasted, Elisabethann Wright, Fabien Roy, Helen Kimberley

“Swiss” certification mark opposition – Hong Kong court finds actual use likely to confuse

Hogan Lovells represented Federation of the Swiss Watch Industry FH (“Federation”) in a successful appeal against a decision of the Hong Kong Registrar of Trade Marks in an opposition involving the “Swiss” certification mark[1]. Importantly, the Court’s decision confirms the public interest in ensuring that certification marks are given the necessary protection in Hong Kong.

Global Brand Benchmarking Survey 2017: The best ROI for your 10 mins this year?

Back by popular demand – this year’s survey includes questions on: best practice for creating and clearing trademarks; trends in online infringements of trademarks; and changes to trademark filing strategies as a result of the Brexit referendum. The resulting report will be sent to all survey participants in May 2017. The survey should take less

US: Our trademark lawyers speaking at 2017 McCarthy Symposium

We are delighted to be sponsoring and speaking at the seventh annual McCarthy Institute Trademark Symposium, taking place on February 17, 2017 in Seattle, Washington. The one-day event, titled “Trademark Law and Its Challenges,” brings together corporate brand representatives, trademark attorneys and public policymakers to address new issues in trademark law. Two of our trademark

Germany: Unlicensed Hard Rock Cafe in Heidelberg Germany ceases operation

After years of litigation Hogan Lovells achieved a ground-breaking settlement for the Hard Rock Group. A restaurant with the same name which operated without a license in Heidelberg will cease to operate at the end of February. In return the Hard Rock Group waives part of the damage claims that were granted to it. Background:

Hamburg – Brands & designs update event (German language)

On 16 February, the Hogan Lovells “Marken & Designs Team” present a retrospective summaryof the decision-making practices of the German/European courts and IP offices in 2016 as part of its established brands and designs update series. In a concise and practical way, we’ll give you a comprehensive overview of the most important decisions and trends in the areas of

Germany: WUNDER-BAUM Air Freshener is a famous trademark

Julius Sämann Ltd. wins with Hogan Lovells before German Supreme Court (Case Ref.: I ZR 75/15) Almost everyone knows the “WUNDER-BAUM” Tree hanging from the rear view mirror of so many cars. Behind this little air freshener stands a sophisticated trademark strategy the rights holders have followed for many decades. Ever since the 1950s, when