The growing use of AI in branding, trademark searches and content creation, coupled with the rise of deepfakes and digital replicas, has introduced new layers of complexity to trademark protection, raising pressing questions around ownership, enforcement and liability. These challenges are particularly pronounced in Asia, where rapid adoption of AI technologies intersects with fragmented legal systems and enforcement gaps.

Against this backdrop, the International Trademark Association (INTA) 2026 Annual Meeting from 2-6 May in London comes at a critical juncture for brand owners and legal practitioners, as AI continues to reshape the intellectual property sector.

INTA’s annual gathering is poised to serve as a key platform for addressing how legal frameworks and enforcement strategies can adapt to a rapidly evolving digital environment.

With strong participation from major jurisdictions such as India and China, INTA board members – Sheja Ehtesham, managing partner at ALG India Law Offices; M S Bharath, founder and managing partner at KRIA Law; and Jianguo Wang, general manager of intellectual property and deputy general manager of brand at Haier Group – tell Asia Business Law Journal what key aspects of IP are likely to be thrust into the spotlight.

The generative AI conundrum

The rise of generative AI is impossible to ignore, and its impact is increasingly evident across the legal sector, particularly within the IP practice. As AI-generated branding, trademark search automation and deepfake-related brand misuse become more prevalent, the need to address trademark protection in an evolving, technology-dominated world has grown more urgent.

“INTA has been actively shaping its position on the intersection of generative AI and intellectual property, with a focus on ensuring that innovation is balanced with effective protection of brand owners and consumers,” says Ehtesham.

Bharath says that branding generated using AI remains “invariably prone to risks if proximate to senior/prior adopted [branding] both in terms of phonetics and visuals”.

INTA has also addressed the growing risks posed by deepfakes and digital replicas through its February 2025 board resolution titled Legislation on Deep Fakes (Digital Replicas). “This resolution recognises that advances in AI have significantly lowered the cost and increased access to tools capable of creating highly realistic synthetic content, amplifying the risk of brand misuse and consumer deception,” says Ehtesham.

Even with legislation in place, she notes that Asian jurisdictions still need to shore up their defences to address existing legal gaps. “Across Asian jurisdictions, gaps remain in terms of harmonised approaches to AI-generated content, clearer allocation of liability, and more effective enforcement frameworks, particularly in digital environments where misuse can occur rapidly and at scale.”

These challenges are particularly pronounced for trademarks, where AI-generated branding has raised questions around authorship, ownership and accountability. “Many jurisdictions, including in Asia, still lack unambiguous frameworks on how such marks should be assessed, particularly where AI plays a significant role in their creation,” says Ehtesham.

The issue is especially acute in Asia, where trademark infringement remains a significant concern. Fragmented legal systems further complicate enforcement, particularly for Chinese businesses looking to expand internationally, says Wang.

“Asia is among the regions with the most active AI applications and the highest concentration of trademark infringements worldwide,” he says. “However, the fragmentation of legal systems, lagging special rules for AI, and inconsistent law enforcement standards have posed substantial risks for Chinese enterprises going global.”

Wang warns that, while generative AI presents clear opportunities, it also introduces complex challenges that must be addressed. “Generative AI brings transformative opportunities as well as challenges to trademark protection. INTA’s position aligns with the common interests of global brand protection and the practical needs of Chinese enterprises.”

Better co-ordination

INTA has previously advocated for greater co-ordination among enforcement authorities in India. This includes customs, regulators and rights holders working as a cohesive unit. As things stand right now, Ehtesham has seen encouraging signs.

“There have been some noticeable improvements in collaboration in recent years, driven in part by sustained engagement between INTA, enforcement authorities and industry stakeholders,” she says. “Initiatives such as INTA’s March 2026 presidential delegation to India, and collaborative customs training programmes, have helped bring together government agencies, brand owners and regulators, improving awareness and co-ordination in enforcement.”

Although things look brighter, she says there is room for improvement, particularly in ensuring consistency across enforcement efforts. “Enforcement in India can still be somewhat fragmented, with varying levels of co-ordination across customs, police and other regulatory bodies,” she says. “While customs enforcement has strengthened, consistency and speed of action in different states can still be uneven.”

Wang believes Asian jurisdictions should co-ordinate trademark examination standards, enact dedicated provisions targeting deepfake-related brand misconduct, and regulate AI-based trademark search services.

Protecting the brand

Amid the wide range of topics set to be explored at INTA’s annual meeting, Ehtesham and Bharath agree that brand protection stands out as the key trademark issue for in-house legal teams.

“The key challenge for in-house teams this year will be protecting brands in an increasingly digital and AI-driven environment,” says Ehtesham. “This includes risks from AI-generated content, deepfakes, impersonation, and automated infringement at scale such as counterfeit listings, domain name abuse and misuse across social media and e-commerce platforms.”

Bharath notes the problem extends beyond brands as it can impact individuals as well. “Individuals and celebrities have had problems from deepfakes and usages of their names, images and likeness.”

Wang says brand protection will also be a central concern for Chinese participants, alongside a broader set of issues. “My personal prediction is that China-related sessions will likely focus on the following topics: new developments in the revision of China’s Trademark Law; cross-border intellectual property protection; brand risk control; and protection for Chinese enterprises, especially digital and e-commerce businesses going global; as well as the regulation of AI-generated trademarks and deepfake misconduct,” he says.

Ehtesham says that proactive strategies and rapid responses will be crucial in mitigating these risks and ultimately safeguarding brands. “A shift towards more proactive strategies, particularly stronger monitoring, rapid takedowns and AI-aware processes may also be key,” she says. “Ultimately, speed of response may come to be critical for maintaining brand trust.”

Wang says that INTA should leverage platforms like the World Intellectual Property Organisation (WIPO) and Asean to “unify law enforcement criteria, streamline cross-border evidence collection procedures, set up joint law enforcement teams, share infringement blacklists, and intensify cross-border penalties”.

Strong India, China contingent

In 2025, India accounted for about 20% of INTA registrations from the Asia-Pacific region. This strong participation is likely driven by factors including valuable insights on emerging trends such as AI and digital enforcement, and a high representation of Indian practitioners across panels.

“India’s strong participation reflects the rapid evolution of its brand and IP ecosystem, driven by increased startup activity, digital businesses and global expansion by Indian companies,” says Ehtesham, who will be speaking on a panel about key case law developments.

“There is also a growing recognition of IP as a core business asset, not just a legal tool. This year’s meeting will feature a strong line-up of India-focused programming including discussions on cross-border enforcement, brand expansion and developments in Indian trademark law.”

Bharath says the Indian contingent is amongst the top five highest registered participants at INTA from across the world, with more than 100 members contributing to scores of committees “leading to meaningful and timely recommendations for amendments to national laws”. He says the strong representation of Indians on INTA’s board is another factor underpinning sustained interest in the association.

China has also been well represented at INTA, and this year is no exception. INTA recently announced that 597 registrants for this year’s event were from China, making it the third-largest represented jurisdiction behind the US (2,101) and the UK (757).

Wang says this year’s event will enable Chinese businesses to further integrate into the global framework and gain insight into the latest developments across the IP spectrum. “Chinese enterprises expect to keep abreast of the latest global rules and trademark protection standards in the AI era, gain direct access to up-to-date international judicial precedents, examination practices and law enforcement developments, clarify compliance boundaries in major European, American and Asian markets in advance, and reduce risks in global business expansion,” he says.

He notes that the abundance of China-themed roundtables will also add value for Chinese participants at the event. “Chinese participants are not merely audience members, but also co-builders of international rules,” he says. “We look forward to deeper participation in and leadership of global trademark rule discussions, so as to promote international rules to better align with the practical needs of Chinese enterprises.”

Down to business

With strong global participation, this year’s INTA Annual Meeting is set to explore a wide range of issues shaping the IP landscape. As the programme unfolds, delegates and the broader IP community will be keeping a close eye on insights and ideas emerging from the daily keynotes, table topics, committee meetings and general and featured sessions.

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The business of ideas, and IP’s Indian moment

For many years, intellectual property in India was considered a specialised legal field, predominantly of interest to multinational corporations, technology companies or prominent consumer brands. Today, IP has become central to daily commerce. It affects the valuation of intangible assets by courts, the evaluation of risk by financiers, the management of distressed companies by insolvency professionals, and the launch of startups.

With the startup and MSME ecosystem in India showing an enhanced awareness of trademarks, branding and identity, courts and regulators are being obligated to address the growing complexity of inquiries concerning domain names, spectrum rights, pledges over intangibles, and brand ownership during restructuring.

Bottom of the pyramid

One of the most remarkable developments has been the expansion of IP awareness beyond formal corporate sectors. Small merchants, local retailers, online distributors and even street vendors are all recognising the growing significance of branding.

The development of e-commerce platforms, digital payments, food delivery applications and social media marketing has facilitated expansion in the reach of even the smallest businesses. A local merchant may now attract customers not only from the immediate neighbourhood, but from across the city or through online channels that serve consumers nationwide. A recognisable identity can provide a valuable commercial advantage.

The outcome is the democratisation of trademarks, which were previously perceived as a tool for large enterprises but are now gaining relevance for first-generation entrepreneurs. The trademark framework in India has become more accessible to entrepreneurs and smaller businesses, notably as a result of procedural reforms and e-filing initiatives.

Branding from day one

Today, IP is frequently regarded as an early-stage asset by modern entrepreneurs, rather than an afterthought. Founders are increasingly acknowledging that investors evaluate not only products or services, but also defensible brands and the capacity to scale under a distinctive commercial identity.

The impact of digital identifiers including domain names, app names, website branding and online marketplace identities has been frequently acknowledged in Indian law and commercial practice. These identifiers frequently serve the same source-distinguishing function as traditional trademarks by assisting consumers in determining the origin, authenticity and reputation of products.

This trend is reflected in recent market activity, where Indian startups in sectors including fintech, cosmetic retail, consumer electronics and digital services derive substantial commercial value not only from physical products or infrastructure, but from brand recognition, digital presence, customer trust and platform identity.

Consequently, the enterprise value of a startup may be substantial even before the business acquires sizable tangible assets, thanks perhaps to the name of its app, its website domain or its logo.

Rise of well-known marks

Companies are actively pursuing the recognition of their marks as well-known trademarks, as evidenced by the expanding list that have achieved this status. This trend is fuelled by the broader and more robust protection that well-known marks are afforded, which may extend beyond the specific products or services for which the mark is registered.

Additionally, this recognition serves to strengthen the organisation’s market position and reputation. It indicates that the mark has attained a high level of public recognition and goodwill, which can be used to enhance licensing or collaboration opportunities, support expansion into new markets, and strengthen consumer trust.

When businesses split

Structural changes including demergers, family settlements and the division of business verticals are becoming more prevalent as businesses expand and develop. These advancements frequently generate intricate inquiries regarding IP ownership and usage, particularly regarding trademarks, trade names and associated goodwill.

The challenge of partitioning intangible assets can be clearly seen in such circumstances. In contrast to physical property, trademarks are inherently indivisible in many cases due to their close association with consumer perception and reputation. Consequently, business separations are becoming more complex and necessitate meticulously organised arrangements to guarantee clarity and prevent potential future disputes.

Intangible asset questions

The classification of particular rights – such as spectrum allocations – as intangible assets with proprietary characteristics, or solely as regulatory permissions, is a developing legal issue. In litigation involving lenders, including proceedings initiated by the State Bank of India, questions of this nature have also arisen, where the commercial character and enforceability of such rights were examined.

Modern commerce depends not only on physical assets, but also on valuable rights generated through licences, authorisations and exclusive use arrangements, making issues of this nature more pertinent.

The resolution of such issues may have broader implications for the way in which Indian law conceptualises intangible property. Valuation, transfer, and use as security in commercial transactions may be feasible if specific rights are acknowledged as assets. Their transferability and enforceability may be restricted if they are rigorously regarded as statutory privileges.

Corporate restructuring issues

The treatment of IP in insolvency proceedings has emerged as a critical domain of commercial law. Questions frequently arise regarding whether IP assets, including trademarks and associated goodwill, form part of the corporate debtor’s asset pool or remain excluded due to separate ownership structures, licensing arrangements or prior assignments when companies undergo insolvency or restructuring.

Judicial developments have demonstrated that disputes regarding IP ownership and control may not always be in direct alignment with the insolvency process, and may necessitate separate adjudication contingent on the nature of the controversy.

When companies attempt to transfer or restructure IP during the insolvency process, additional complications arise. If IP is essential to the business but not obviously vested in the corporate debtor, the viability of a resolution plan may be impacted.

Unauthorised memes, content

It has also become a growing practice for brands to convert copyrighted film scenes, characters and dialogues into “memes” or viral trend content for promotional gain, without appreciating the legal consequences of such use. The mere fact that content becomes popular online or is widely circulated in meme culture does not place it in the public domain, nor does it extinguish the copyright subsisting in the original cinematograph film, screenplay, character depiction, performance elements or dialogue.

Accordingly, the unauthorised creation, adaptation and commercial dissemination of memes based, for instance, on the character portrayed by Rakesh Bedi as Jamil Jamali, including the phrase “Baccha hai tu mera” (You are my child), constitutes infringement when deployed to advertise or promote a brand. Businesses are responsible if they use copyrighted works for marketing, engagement or brand recall without getting permission, a licence or approval from the rightful owners.

Misleading claims

Across jurisdictions, consumer protection and unfair competition laws recognise that commercial messaging must be judged not only by its literal wording, but by the overall impression it creates in the minds of consumers. Where an advertisement, label or campaign conveys a false sense of origin, quality, endorsement, affiliation or approval, businesses may be liable for misleading representation and unfair commercial conduct.

Recent scrutiny surrounding the use of labels such as “Swiss Made” shows that commercial signifiers derive their value from authenticity, trust and reputation, and that misuse can mislead consumers even without an express false statement.

In statements issued in relation to enforcement of the “Swissness” regime, the Swiss Institute of Intellectual Property has emphasised that the value of the “Swiss” designation lies in its credibility, and that misuse must be restrained where it deceives consumers or exploits the reputation associated with Swiss origin.

Legislative reforms

Recent legislative initiatives, including the��Jan Vishwas��(Amendment of Provisions) Bill, 2026, reflect a broader policy shift towards improving the ease of doing business through rationalised penalties, reduced procedural burdens and a more compliance-oriented regulatory framework. In the IP context, measures of this nature are particularly relevant for startups, smaller enterprises and growing businesses that regularly interact with regulatory systems while building and protecting their commercial assets.

As businesses increasingly rely on brands, technology and other intangible assets, the legal framework must remain efficient, proportionate and commercially practical. Reforms aimed at streamlining compliance and administration can strengthen confidence in the IP system.

Intellectual property has transitioned from the periphery of Indian law to the heart of Indian commerce, where it now determines who competes, attracts capital, commands value and endures.

ANAND AND ANAND
B-41, Nizamuddin East,
New Delhi 110013, India
Tel: +91 11 49146400
Fax: +91 120 4243058
Email: email@anandandanand.com

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Indonesia’s new trademark guidelines: Key changes

The Indonesian government has officially enacted Minister of LawRegulation (Permenkum) No. 5 of 2026, introducing significant updates to the regulatory framework governing trademark registration in the country.

The new regulation replaces Minister of Law and Human Rights Regulation No. 67 of 2016 (along with its subsequent amendments), which is now considered outdated and no longer aligned with current legal developments, administrative practices and business needs.

This article outlines key changes introduced under the regulation, particularly those relevant to foreign applicants, as well as procedural updates that may impact filing strategies.

Foreign applicant requirements

One of the most notable changes introduced by the regulation is the introduction of additional filing requirements for applicants domiciled outside Indonesia, which was not required previously. For trademark applicants residing outside of Indonesia, the updated filing requirements are as follows:

1. 1. Applicants domiciled outside Indonesia are no longer required to submit identity documents.
   2. If the applicant is a company/corporation, the articles of association/deed of establishment/business licence/company certificate must be locally legalised and sworn-translated into Indonesian by a sworn translator.
   3. Legalised copy of priority documents, sworn-translated into Indonesian by a sworn translator (if claiming priority rights).
   4. Power of attorney.
   5. Statement of mark ownership.

Flexible filing

A practical and business-friendly feature of the new regulation is the flexibility granted to applicants who are unable to complete all documentary requirements at the time of filing.

A trademark application may still proceed even if certain documents are missing at the time of submission. In such cases, the Indonesian Trademark Office will issue a formality office action requesting the applicant to submit the outstanding documents within two months from the date of the official notification.

Accelerated examination

Another key highlight of the new regulation is acceleration of the substantive examination process. Under the updated framework:

1. 1. If no opposition is filed by third parties, the substantive examination may be completed within a maximum of 30 working days.
   2. If an opposition is filed, the examination may be completed within a maximum of 90 working days.

However, it is important to note that while these timelines are prescribed under the regulation, actual practice may vary. Factors such as workload at the Trademark Office, complexity of the mark and the presence of objections or oppositions may result in longer processing times.

Applicants are therefore advised to treat these timelines as indicative rather than absolute.

Examination criteria

Articles 34 and 35 of the regulation set out the criteria for examination, prohibiting the registration of marks that violate state ideology, public morality or lack essential distinctiveness, such as generic terms and purely functional shapes. To ensure market transparency, applications are rejected if they are misleading regarding product quality, or were filed in bad faith.

Furthermore, the law protects the identity of famous individuals and state institutions by requiring explicit authorisation for the use of names, photos or official symbols.

Central to these regulations is the “dominant elements” test, which determines if a new mark is substantially or entirely identical to existing or well-known trademarks. This assessment extends to the classification of goods and services, which are deemed “similar” based on their nature, distribution channels and consumer base.

By combining these strict ethical standards with a comprehensive analysis of brand similarity, the framework aims to prevent consumer confusion and protect the intellectual property rights of prior registrants.

Criteria: Well-known marks

The regulation also sets out criteria for determining a well-known mark. As referred to in article 34, this is established by considering:

1. 1. Level of public knowledge or recognition of the mark in the relevant business field as a well-known mark;
   2. Sales volume of goods and/or services and profits gained from use of the mark by its owner;
   3. Market share held by the mark in relation to the circulation of goods and/or services in the community;
   4. Geographical scope of the mark’s use;
   5. Duration of the mark’s use;
   6. Intensity and promotion of the mark, including the investment value utilised for such promotion;
   7. Trademark registrations or applications in other countries;
   8. Success rate of law enforcement in the field of trademarks, particularly regarding recognition of the mark as well-known by authorised institutions; or
   9. Inherent value of the mark obtained through its reputation and quality assurance of the goods and/or services it protects.

Changing name/address

Registered trademark owners and applicants of pending trademarks in Indonesia have a clear legal pathway to update their records if their name or address changes, or if a clerical error occurred during the initial filing.

The process is designed for efficiency, allowing for both digital and physical submissions, provided that the owner submits supporting evidence such as identity documents or corporate deeds and pays the required administrative fees.

The ministry follows a strict timeline for these updates, completing initial examinations within 15 days and providing a grace period of two months for applicants to fix any missing paperwork.

Once approved, the change is officially recorded and publicised in the��Official Trademark Gazette, ensuring that legal registry always accurately reflects the current identity and location of the trademark owner.

Assignments/transfer of rights

The regulation allows for the transfer/assignment of trademark rights through various channels including inheritance, contractual agreements and charitable endowments.

A vital restriction exists to protect market clarity. If an owner possesses several trademarks that are substantially similar for the same types of goods or services, they cannot “split” the portfolio.

Instead, all related marks must be transferred to the same recipient. This prevents a situation where different owners might use confusingly similar brands in the same industry, which would undermine the trademark’s role as a unique source identifier.

Furthermore, the law maintains strict linguistic standards. Any foreign legal documents must be accompanied by a certified Indonesian translation to be valid. This ensures that the state registry remains accurate and legally enforceable within the Indonesian jurisdiction. The deed of assignment should also be notarised to be accepted by the minister for further processing.

Once the application is filed, it undergoes a mandatory examination period of 15 days to verify document integrity. The ministry provides a structured two-month window to rectify any deficiencies, ensuring that minor clerical errors do not immediately void a transfer.

Following approval, the transfer is not only recorded but also published in the��Official Trademark Gazette. This final step of public notification serves as the official legal notice to the public, solidifying the new owner’s rights and maintaining the integrity of the national trademark database.

Collective marks

Collective marks in Indonesia are designed for group-based entities like associations, co-operatives or government bodies supporting MSMEs, rather than individual owners. To register, applicants must provide standard brand details along with a mandatory “Terms of Use” document, which outlines the quality standards of the goods, how the group will supervise its members’ use of the mark, and what penalties exist for non-compliance.

Beyond standard administrative paperwork, the regulation accommodates modern branding by requiring specific technical formats for 3D, sound and hologram marks. Essentially, the regulations ensure that collective marks function as a shared “seal of quality” for a group, while applying the same rigorous procedural standards used for individual trademarks to maintain legal consistency.

Force majeure������DZ��������DzԲ�

The regulation also introduces explicit provisions addressing��force majeure��situations – an important addition that provides greater legal certainty and procedural flexibility. These apply in the event of extraordinary circumstances such as:

1. 1. War
   2. Revolution
   3. Civil unrest
   4. Labour strikes
   5. Natural disasters
   6. Other comparable emergencies

Applicants may request an extension of time to fulfill their obligations. This extension may apply to various procedural stages, including:

1. 1. Initial filing requirements
   2. Submission of priority documents
   3. Changes of name or address
   4. Recordal of assignment
   5. Submission of responses to provisional refusals or rejections

The inclusion of��force majeure������DZ��������DzԲ� is particularly relevant in today’s global context, where unexpected disruptions – whether geopolitical or environmental – can significantly impact business operations and administrative processes.

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TM survival for brands absent or suspended from Russian market

Transformation of the international business climate and the evolving geopolitical landscape have prompted many foreign companies to reassess their presence in the Russian market. Whether through suspension of operations, scaling back commercial activity or a complete exit, the practical consequence for brand owners is the same: trademarks registered in Russia risk falling into a state of non-use, with the attendant legal vulnerabilities that follow.

At the same time, the Russian consumer market remains one of the largest in the Eurasian region, and the prospect of a future return makes the question of preserving trademark rights not merely a legal formality but a matter of long-term commercial strategy.

Russian trademark protection depends on registration

In the Russian legal framework, trademark protection is strictly registration based. Exclusive rights arise on state registration and are certified by a certificate issued in respect of a specific list of goods and services, as provided by articles 1481 and 1484 of the Civil Code.

The scope of protection is accordingly bound by the register entry rather than by the actual market presence or commercial reputation. In commercial terms, a trademark concentrates the accumulated value of a brand – investments in marketing, quality control, distribution and consumer communication – in a single designation that enables purchasers to identify the origin of goods and services with confidence.

For many companies, registered trademarks represent one of their most valuable assets. Loss of registration does not merely eliminate a legal right. It removes a strategic instrument that may take years and significant resources to rebuild.

Three-year non-use risks cancellation

Under article 1486 of the Civil Code, legal protection of a trademark may be terminated prematurely – in respect of all or part of the registered goods and services – if it has not been used continuously for a period of three years. Any interested party may initiate cancellation proceedings by first sending a formal proposal to the rights holder and, absent agreement, filing a claim before the IP Court.

The burden of proving use falls on the rights holder. Use is recognised where a trademark is applied by the rights holder or by a person acting under the rights holder’s control. Use via parallel import channels, which has become more prevalent following partial legalisation of parallel imports for certain goods and brands in March 2022, does not meet this standard.

For companies that suspended or terminated supply operations in Russia during 2022, the three-year grace period elapsed in 2025, rendering their trademark portfolios directly vulnerable to cancellation actions.

Passive absence invites trademark attacks

The risks associated with a passive approach during a period of market absence are cumulative and mutually reinforcing. Competitors and bad-faith actors regularly monitor the register for marks that have entered a non-use period.

Applications for identical or closely similar designations – composite marks incorporating dominant elements of well-known brands, transliterations, or minor graphic variations – have been used to exploit the absence of the original rights holder.

In the Xiaomi case, the IP Court terminated legal protection for class 21 goods after the trademark owner failed to produce qualifying evidence of use and could not establish, as a matter requiring specific proof, that the mark enjoyed widespread recognition in Russia in relation to those goods (resolution of the IP Court, 16 February 2023, No. SIP1257/2021).

Marks belonging to Amazon, NEC, Lenovo, Victoria’s Secret and others have, meanwhile, been subjected to analogous attacks.

Beyond cancellation, prolonged absence creates conditions for dilution and loss of customs enforcement mechanisms, which are instruments of considerable practical importance in combatting counterfeit goods at the point of importation.

Russian courts are unlikely to regard voluntary market withdrawal as an excusable reason for non-use within the meaning of article 1486. While the law permits consideration of circumstances beyond the rights holder’s control, the decision to exit the market does not meet this threshold under current judicial practice.

Proactive refiling resets non-use clock

One of the most effective instruments available to rights holders in these circumstances is the proactive refiling of an application for a designation that maintains a legal connection with the original brand while establishing a new registration date, thereby resetting the three-year non-use period.

A fresh registration converts a legally vulnerable asset into one that is legally current.

Refiling is, however, subject to a structural constraint. Article 1481 of the Civil Code confirms that the exclusive right to a trademark is certified by a single registration certificate.

State registration of a designation identical to an already registered mark in the name of the same rights holder for an identical list of goods and services is inconsistent with the nature of the exclusive right and may be refused by the trademark agency Rospatent as contrary to public interests. A strategy therefore needs to be developed.

Three refiling strategies for trademarks

Three principal approaches are available in practice. The first, and legally most straightforward, involves modifying the designation itself: filing an application for a mark that is not identical to the registered trademark but preserves its essential recognition.

This is achieved by adding verbal elements such as a qualifier or product line identifier or alternatively registering the verbal component separately from the graphic logo or vice versa, or by introducing minor graphic refinements.

This avoids the exclusivity conflict while maintaining the commercial link with the original brand.

The second approach involves maintaining the designation but modifying the list of goods and services. Filing an application covering a different set of goods and services does not conflict with the earlier registration and produces a fresh certificate with an independent priority date.

The third approach – filing for an identical mark for identical goods with the intention of subsequently abandoning the earlier registration – is legally possible but commercially the least desirable, as the priority date is irrevocably lost. This option should be considered only where the first two are inapplicable.

A combined strategy of co-ordinating several applications covering different designations and lists provides the greatest flexibility and the most resilient legal position.

Fee changes demand narrower specifications

A recent amendment to the rules governing official fees for trademark filing and renewal has introduced an additional charge for each good or service designated beyond the first 10.

This change has direct practical implications for refiling strategies because the cost of maintaining broad, comprehensive lists of goods and services – a common practice designed to maximise the formal scope of protection – increases materially.

Accordingly, the drafting of the goods and services list now requires a more deliberate and commercially focused approach. Rights holders should conduct a careful audit of the existing list and identify the positions that represent actual or anticipated commercial interest.

Protection in respect of positions that are neither currently used nor realistically likely to be used in the foreseeable future generates additional fee liability without producing the corresponding legal benefit.

Precision in list drafting therefore serves both to reduce costs and to sharpen the scope of protection in relation to the goods and services that genuinely matter. Moreover, such an approach significantly reduces the risk of potential collision with third parties’ rights that may result in cancellation actions or oppositions by those third parties aimed at removal of the conflicting marks from the register.

Current registrations secure Russia re-entry

Should conditions permit a resumption of commercial activity in Russia, the existence of a valid registration will be decisive.

A company with current registrations will be able to assert priority against conflicting marks filed during the period of absence and pursue enforcement through the available administrative and judicial mechanisms, which continue to function effectively and without discrimination against foreign rights holders.

Russian law and the consistent practice of Rospatent do not accommodate bad-faith registrations. Attempts by third parties to register designations confusingly similar to those owned by others can be successfully challenged, especially provided that prior registered rights exist and are asserted in a timely manner.

A company that has allowed its registrations to lapse will face a materially more complex re-entry, potentially requiring invalidation proceedings against marks filed in its absence.

Shift from passive to strategic approach

In conditions of forced reduction of market activity, the management of trademark rights must shift from a reactive to a strategic posture. A passive approach – proceeding on the assumption that the situation will resolve itself before the three-year non-use period expires – carries a level of legal risk disproportionate to the cost of the available preventive measures.

Proactive refiling is a legitimate and commercially rational instrument for preserving legal presence in a jurisdiction where physical commercial activity has been reduced or suspended.

Combined with a disciplined approach to list drafting – particularly in light of the amended fee structure – it allows rights holders to maintain the legal infrastructure of their brand at a manageable cost, ensuring that when the conditions for market re-entry are met, the legal gateway remains open.

Gorodissky & Partners
B Spasskaya Str, 25, bldg 3
Moscow 129090, Russia
Tel: +7 495 937 6116
Email: pat@gorodissky.com

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Taiwan’s global trademark strategy for brand expansion

When a company is preparing to expand its products, services or platform from one market into many, the brand name is often the first point of legal exposure. If trademark clearance and filing architecture are not completed in advance, common consequences include: the brand already being registered by a third party in the target market; takedowns on e-commerce platforms after launch; local distributors or business partners rushing to file the mark first; and reduced deal value in financing, licensing or franchise negotiations because ownership is unclear.

Accordingly, trademark strategy should not be understood as a simple act of filing an application. A more mature approach is to treat trademarks as infrastructure for brand expansion. Before entering a market, a company should establish a naming and search protocol, then prioritise which countries to file first, which classes deserve early coverage, and which brand variants should be protected together. This approach balances legal risk control with commercial execution speed.

Plan for naming, filing, monitoring and licensing

Key idea: A trademark filing is not the end of the process.

It is the legal foundation for brand governance, channel expansion, cross-border licensing and investment negotiations.

Six strategic pillars

Global TM strategy framework

Recommended market prioritisation:

• First ring: Principal revenue markets, headquarters jurisdiction, and major export destinations.
• Second ring: Manufacturing locations, OEM/ODM sites, active distributor jurisdictions, and key marketplace countries.
• Third ring: Regions likely to be involved in licensing, franchising, fundraising or M&A discussions within the next 12-24 months.

Regional planning, rollout path

Trademark registrability, use requirements, opposition practice and examination standards vary across jurisdictions. A global strategy does not mean filing everywhere at once. It means applying a consistent brand principle through a phased, region-by-region and risk-based implementation model.

Suggested 12-month rollout rhythm

Governance checklist for brand legal team

Conclusion

A mature global trademark strategy is not a simple exercise of filing the same brand name in multiple countries. It is a co-ordinated legal and commercial framework that supports market entry, digital channels, licensing, strategic partnerships and enterprise valuation.

Companies that establish naming governance, priority-country coverage, evidence management and enforce- ment mechanisms early are usually able to save substantial downstream cost while reducing the risk of reactive brand protection.

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The London office, which is slated to open in January next year, will be headed by partner Kiyoshi Honda, who has particular expertise in renewable energy, and is also experienced in outbound transactions involving the UK and continental Europe.��

Currently, the Tokyo-based firm runs a European practice group consisting of more than 10 partners. Among them are overseas-qualified lawyers such as UK-admitted John Lane in cross-border litigation and regulatory investigations, who was previously at Freshfields, and Germany-qualified Axel Kuhlmann in corporate and M&A, who used to be at Gleiss Lutz.������

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Nagashima Ohno lands Japan’s former tax head for Tokyo team

Nagashima Ohno & Tsunematsu has strengthened its tax practice with the addition of former commissioner of Japan’s National Tax Agency (NTA), Hitoshi Sumisawa, to its team of special advisers in Tokyo

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Ryuichi Sakamoto, a finance partner and the representative of Nishimura & Asahi’s Hong Kong office, told 91��Ƶ that there is currently demand among Japanese companies in the city for legal advice in matters regarding privacy law, litigation and M&A transactions in Southeast Asia.

Sakamoto said: “A typical example of the latter is that the target company group of an M&A has a Southeast Asia headquarters and a subsidiary in Hong Kong. We can handle those transactions by collaborating with our firm’s branch offices in Southeast Asia.”

Having already received approval from the Hong Kong Law Society for the office launch, the Tokyo-based law firm is now in the middle of preparing for the office opening and can start its business on the ground in the next few months, 91��Ƶ has learned.

In Southeast Asia, Nishimura & Asahi currently operates directly and via associations with local law firms in Vietnam, the Philippines, Indonesia, Myanmar, Thailand, Malaysia and Singapore.

The pool of Japanese companies in Hong Kong that Nishimura & Asahi is looking at currently stands around 1,400 out of some 9,000 non-Hong Kong enterprises, to the 2023 data stated by the Hong Kong Economic and Trade Office in Tokyo. Japanese companies currently account for the largest group of overseas companies.

As of June last year, 648 Asean companies in Hong Kong accounted for about 7.2% of the total number of foreign firms in Hong Kong, to the Hong Kong Trade Development Council, citing data released by the city’s Census and Statistics Department.

Sakamoto, who specialises in asset finance and asset management, will soon be joined by M&A and corporate lawyer Saori Okada, a former chief representative of Nishimura & Asahi’s Beijing office. Since July 2015, Okada has been practising at Hong Kong-registered Okada Law Firm, which has a business relationship with Nishimura & Asahi.

Together, they will look to grow the number of local and multinational clients, the Tokyo-based law firm’s secondary target for its Hong Kong office, who are thinking of expanding their business into Japan.

Sakamoto explained that, in recent years, “there have been cases where companies in Hong Kong have sought advice for matters such as investing in real estate in Japan, engaging in business collaboration with Japanese companies in several areas of business as well as M&A transactions with Japanese corporations”.

The Hong Kong office representative added that his office on the ground can support those companies with real estate law, corporate law, Japanese regulatory law, and several other fields together with the firm’s Tokyo headquarters.

In 2022, Hong Kong-based investment firm PAG acquired Huis Ten Bosch, one of Japan’s largest theme parks, from Japanese travel agency HIS for around JPY100 billion yen (USD765 million).

With these targeted opportunities in sight, Sakamoto told 91��Ƶ that his firm sees an advantage of having its own office in Hong Kong, rather than establishing an office in association with a local law firm.

“By doing so, we can use our own name directly with our potential clients, including Japanese, Hong Kong and multinational companies.”

In mid-October, Nishimura & Ashai also announced its expansion in Europe with the scheduled launch of offices in London and Brussels, boosting the firm’s number of European outfits to four after those in Frankfurt and Düsseldorf.

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Nishimura & Asahi expands Europe footprint with two offices

Nishimura & Asahi has expanded its overseas network in Europe with the scheduled launch of new offices in London and Brussels, boosting its outposts in the continent to four after those in Frankfurt and Düsseldorf

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Nishimura & Asahi expands real estate practice in Vietnam

Nishimura & Asahi has strengthened its real estate offering and boosted its lawyer bench in Vietnam with the addition of new partner Nguyen Ngoc Phuc in Ho Chi Minh City

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Seah will be joined by Simmons & Simmons’ London construction and insurance disputes partner Steven Kaye, who is set to relocate to the UK firm’s Singapore’s office, in July this year. This will see the UK firm’s dispute resolution team in Singapore expand to four partners.

“These two partner moves represent a bold statement from the firm about its commitment to investing in Singapore and the wider region,” said Emily Monastiriotis, international head of dispute resolution at Simmons & Simmons. “Terence and Steven are two outstanding partners who will add great depth to our team and help to meet the growing demand for a wide range of disputes expertise, both domestically and internationally,” Monastiriotis added.

The Singapore-based litigator – who is dual qualified in the city-state and the UK – specialises in advising on commercial and financial disputes. Before his time at Virtus Law, he had practised as a partner at Singapore law firm Shook Lin & Bok after close to five years of working as a senior associate at Drew & Napier and WongPartnership.

Over the years, Seah has represented international corporations and financial institutions in major international and local disputes as well as investigations.

Simmons & Simmons’ disputes resolution team expansion efforts in Singapore come on the heels of the UK firm’s hire of Jeffrey Friedenberg from Angelo Gordon to head its private funds team in Hong Kong.

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Simmons & Simmons names private funds head in Hong Kong

Simmons & Simmons boosts Hong Kong funds practice with Jeffrey Friedenberg from Angelo Gordon as head of private funds

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Tokyo Stock Exchange-listed Renesas – advised by DLA Piper, Covington & Burling and Nagashima Ohno & Tsunematsu – will launch an all-cash buyout of Australian Securities Exchange-listed Altium via a scheme of arrangement under Australian law, according to a February 14 by the Japanese company.��������

Represented by King & Wood Mallesons and Reed Smith, Altium’s board of directors has unanimously accepted the buyout, which is expected to close in the second half of this year pending approval from Altium shareholders, an Australian court and regulators.����

DLA Piper’s advice to Renesas is led by Sydney-based corporate partners David Ryan and James Stewart, while Covington & Burling’s team consists of lead partners Mark Plotkin, Sam Karson and Brian Kim. Nagashima Ohno’s partner Miyuki Ishiguro is leading the Tokyo-based law firm’s team advising Renesas.������

On the seller’s side, King & Wood Mallesons’ partners David Friedlander and Daniel Natale are leading their firm’s team advising Altium. Michael Lowell, chair of Reed Smith’s global regulatory enforcement group, is acting as the lead partner advising Altium on the regulatory aspects of the transaction.����

In 2018, Nagashima Ohno and Covington, together with Morrison & Foerster, Renesas on its USD6.7 billion acquisition of Integrated Device Technology, a Nasdaq-listed US analogue mixed-signal products supplier.����

Reed Smith, on the other end, has acted for Altium in the past such as advising the Australia-listed company on its global “TASKING” business to Scandinavian private equity investor FSN in 2020.����

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White, who had practised as a partner at McDermott for close to three years, specialises in global oil, gas, liquefied natural gas (LNG), refining and petrochemical project development. He has advised on all aspects of energy-related projects and transactions, including the acquisition and disposal of energy assets and the granting of upstream concession agreements.��

The Singapore-based lawyer, who has become the 14th partner at Watson Farley’s Singapore office with now a 33-strong lawyer team, had served as a partner at King & Spalding and Clifford Chance before his time at McDermott.����

In 2012, while still practising at Clifford Chance before his move to King & Spalding in the same year, he had the UK firm’s Singapore team in advising Nagarjuna Oil Corporation on Trafigura’s USD130 million investment into its oil refinery then being constructed in the Indian state of Tamil Nadu.����

As a King & Spalding Singapore-based partner in 2015, he a team advising BW Gas on its tender to provide Egyptian Natural Gas with LNG regasification services utilising a floating storage regasification unit in Egypt.

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APG has joined forces with sovereign wealth funds, the Abu Dhabi Investment Authority (ADIA) and the Indonesia Investment Authority (INA), to invest in the Kanci-Pejagan and Pejagan-Pemalang sections of the Trans-Java Toll Road, the initial seed assets for the toll road investment platform.����

The toll road platform is targeting up to USD2.75 billion of investment in Indonesia’s toll road networks, according to a February 7 by Clifford Chance.������

The Clifford Chance team advising APG was led by Singapore partner Melissa Ng, with the UK firm’s Jakarta-based counterpart ABNR advising the global pension investor on Indonesian law. ABNR has been contacted for comment on its involvement in the deal.��������

Allen & Overy and its Indonesia association firm Ginting & Reksodiputro’s advice to the INA was led by partner Sugianto Osman. On the other hand, Herbert Smith and its Indonesia association firm Hiswara Bunjamin & Tandjung acted on the toll road investment platform, being led by partners Matthew Goerke, Dhani Maulana Pattinggi and Glynn Cooper.��������

The ADIA mandated Linklaters to act as its legal adviser on the co-investment in the toll road investment platform, according to a source with knowledge of the transaction. Linklaters has declined to comment on its involvement in the deal.������

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Pasona, a Japanese multinational corporation specialising in employment and staff solutions, said in a February 8 that it had reached an agreement accepting Dai-ichi Life’s offer and agreeing to sell its entire 51% stake in Benefit One to the target.����

The Tokyo-based employment and staff solutions company also said in the filing that, by accepting Dai-ichi Life’s offer of JPY2,173 (USD14.5) per share, it had terminated its share tender agreement with Japanese digital healthcare provider M3.����

Dai-ichi Life, whose tender offer lasts from February 9 to March 11 this year to take Tokyo Stock Exchange-listed Benefit One private, has mandated Nishimura & Asahi as legal counsel, with the firm’s team being led by Tokyo-based partners Yamato Nozawa and Junya Kokaji.����

On the target side, Benefit One, which has 1.38% of its shares owned by the Norwegian government, has been seeking legal advice from Mori Hamada. The Tokyo-based law firm has declined our request for information on its involvement in the deal.��������

Dai-ichi Life’s tender offer launch for Benefit One has come just days after Japanese telecom giant KDDI announced its plan to acquire Lawson, one of Japan’s largest convenience store operators, via a JPY496.5 billion (USD3.3 billion) tender offer. In this transaction, Nishimura & Asahi has also been mandated by KDDI as its legal counsel.��������

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