Trade Marks 2019

The Trade Marks guide provides expert legal commentary on key issues for businesses. The guide covers the important developments in the most significant jurisdictions.

Last Updated: March 01, 2019


Author



Kirkland & Ellis LLP is one of the world’s leading law firms, with approximately 2,500 lawyers practising from 14 offices in the United States, Europe and Asia. Our clients and experience cut across every major industry and discipline. Clients across the globe call upon Kirkland to handle their most important and complex corporate, litigation, intellectual property and restructuring matters.


Trade Mark Trends and Developments

It has become increasingly clear that trade-mark law is played on a global chessboard. The internet now reaches virtually all corners of the globe, and social media platforms have made international recognition of new brands far easier to achieve. With the simple click of a button, a brand with a social media account can push an advertisement to millions of people all over the world without paying for traditional advertising mediums. This has changed the game. 

The relatively easy access to global advertising and branding, combined with the constant need to create new brands and products to keep up with the ever-changing desires of consumers worldwide, means that finding a unique brand name is more challenging than ever. In light of the risk that a foreign company will develop a similar brand independently in its region, it has become increasingly important to secure rights internationally where practicable. From the beginning of planning an important product, brands are often now encouraged to file in foreign jurisdictions to ensure that they can maintain their trade-mark rights as they expand. See eg, http://www.compumark.com/press-releases/china-course-overtake-usa-worlds-leading-source-foreign-trademark-applications-2020/ (The number of US trade-mark applications made by Chinese brands has increased by 800% since 2014). This has led to a continued increase in trade-mark applications worldwide. See eg, https://www.gov.uk/government/publications/trends-at-uk-intellectual-property-office-1995-to-2017 (30% spike in trade-mark applications between 2016 and 2017 in the UK Intellectual Property Office). Certain jurisdictions have made this even easier by allowing trade-mark applications without an initial demonstration of use. See eg, https://laws-lois.justice.gc.ca/eng/acts/T-13/ (removing declaration of use requirement for Canadian trade-mark applications). 

Unsurprisingly, courts have also been impacted by this change. The constant influx of new products and brands in the market is followed closely by more opportunities for trade-mark litigation. When trade-mark litigation then commences, courts must assess whether modern consumers are sophisticated enough to determine whether differences in logos, marketing, or services will be sufficient to defuse a likelihood of consumer confusion. On the one hand, in a market with perhaps dozens of similar marks for similar services operating online, consumers may be overwhelmed and unable to distinguish between them. On the other hand, with increasing brand proliferation, consumers may be more brand-aware and sophisticated than they have been in the past. Only time will tell what impact these changes will have on courts’ analyses of likelihood of confusion.

In other words, it is more important than ever, as this very book reflects, for lawyers across the globe to work together to resolve trade-mark issues. 

Author



Kirkland & Ellis LLP is one of the world’s leading law firms, with approximately 2,500 lawyers practising from 14 offices in the United States, Europe and Asia. Our clients and experience cut across every major industry and discipline. Clients across the globe call upon Kirkland to handle their most important and complex corporate, litigation, intellectual property and restructuring matters.