This is the third edition of The Trademarks Law Review. As in previous editions, the key objectives for each of the many jurisdictions included in the publication remain the same: to provide, first, an annual snapshot of trademark law that includes a summary of the key legal provisions, second, a review of recent developments and trends from the courts, and third, an informed view of areas of expected legal activity and legislative change going forward.
To this end, our panel of leading trademark practitioners, including those from several countries new to the publication, have each been invited to provide a chapter of commentary on their own jurisdiction. The broad structure of each chapter is similar, allowing for clear points of comparison, while leaving enough space for issues of particular relevance in a given country to be explored. Our authors have therefore all struck a balance between conveying the key elements of the trademark landscape in their respective countries, while also giving a flavour of current and commercially active issues in the trademark arena. The former must necessarily be concise – this book does not in any sense aim to provide an exhaustive analysis – but our authors have been encouraged to explore the latter with appropriate emphasis depending on what has been happening recently in their respective jurisdictions.
At a global level, the tools available to business for securing international trademark protection continue to develop. The international trademark registration system under the Madrid Protocol now extends to 121 countries, with new members signing up each year, most recently Brazil in October 2019. This mechanism enables businesses to secure trademark protection in any or all of these countries via a single application administered by the World Intellectual Property Organization (WIPO) in Switzerland. The harmonisation of trademark law and practice around the world continues to be a challenge in some areas, despite the considerable progress that has been, and is being, made in this area, not least through WIPO.
Recent trademark decisions (or pending cases) across the geographical footprint of this edition cover a variety of commercially important issues for the business community, including anti-counterfeiting, bad faith and exhaustion of rights. Online and digital infringements remain a key aspect of the trademark landscape in a number of jurisdictions, whether in an online retail context, on social media platforms or elsewhere on the internet. Fundamentally, the only mechanism for tackling legal issues that arise online is on a jurisdiction-by-jurisdiction basis, but this is heavily at odds with the way the internet operates without reference to geographical borders. Consequently, this is one area where the lack of harmonisation can be felt most acutely, with determined infringers able to achieve their ends by exploiting the worldwide differences in the treatment of legal issues surrounding online infringement. These issues remain as relevant as ever in this third edition.
Our authors have also covered recent or imminent changes to trademark law and practice in their countries. These are many and varied, from new opposition and cancellation procedures in several countries to new civil court procedures in Russia, and expected procedural changes relating to proof of use in the US at the Trademark Office and the Appeal Board. The effect of Brexit on trademarks and IP, and indeed on the commercial landscape, also raises important issues, though whether, when and how the UK will leave the EU remains shrouded in uncertainty. Naturally, the focus of each chapter differs at a granular level to reflect those areas where its authors consider legal scrutiny has been most clearly directed. Collectively, however, they cover a broad range of important and current issues.
We hope that readers will consult this new edition regularly, and that its concise nature and clear structure will provide easy access to understanding the essence of what is relevant and current in the world of trademark law.
Cleveland Scott York