Features
This year will be remembered as an important one for OHIM. Examination times are likely to start falling significantly and the promised cut in fees seems to be on the horizon at last. Although justifiably proud of its achievements this year, the management at OHIM is well aware that more needs to be done
Internet host providers and auction platforms increasingly findthemselves at the centre of claims for trademark infringementbased on sales of counterfeit items on their websites. Two courts – one in France and one in the United States – have recently issued decisions in cases involving eBay, but reached completely different conclusions. In this focus, David S Fleming of Brinks Hofer Gilson & Lione examines the long-awaited decision in the Tiffany Case, while David Taylor of Lovells talks to WTR about the issues raised by the French ruling
There has been a lot of talk about the Anti-counterfeiting Trade Agreement since news of its existence first broke towards the end of last year. An unusual level of secrecy surrounding the negotiations means that people are not sure exactly what the treaty is about
OHIM has amassed well in excess of €300 million in surplus funds. The problem is, it was never supposed to make any money. A cut in fees was agreed over a year ago, but progress has since been slow. WTR asked a number of interested parties for their opinions on what should be done with the excess funds
OHIM has close ties with the national offices of all member states and new IT tools will usher in even higher levels of cooperation. However, the decision to make national search fees optional and proposed cuts to OHIM’s fees have caused divisions
While the scope of protection to be afforded to indigenous peoples’ rights is still the subject of international debate, brand owners should take note that the efforts to preserve or revive these rights mean that some names or traditional imagery may not be used freely
The ECJ has issued guidance on comparative advertising following a reference from the Court of Appeal for England and Wales in O2 Holdings Limited v Hutchison 3G UK Limited. The case may have repercussions on national practice across the European Union
In late 2007 the Ninth Circuit refused to award attorneys’ fees in a counterfeiting case on the basis that the plaintiff had chosen to receive statutory rather than actual damages. This decision departed from precedent and worried brand owners
Columns
Recent changes to Russia’s IP legislation have reinforced a statutory platform for contractual licensing and franchising inRussia. While the new rules have clarified certain aspects, licensing and franchising remain complex operations in Russia
The international anti-counterfeiting community regularly cites Canada as having inadequate and ineffective IP rights protection. Prompted in part by this censure and in part by a grass-roots demand for change, Canada is taking steps to improve its IP protection
In internet advertising cases, multiple splits of authority in US courts make it important to think strategically both in litigation and in setting corporate advertising policies
Roundtable
Three senior practitioners look at trademark issues affecting brandowners on the Internet
News
The board of the InternetCorporation for AssignedNames and Numbers, the bodyresponsible for the globalcoordination of domain names,approved at the end of June arecommendation that willdramatically expand thepossibilities for new top-leveldomains (TLDs) in the genericdomain name space
In a series of decisions, the Boardof Appeal of the Office forHarmonization in the InternalMarket has overturned rulings ofthe Cancellation Division inwhich the latter had refused toorder the cancellation of theCommunity trademarks (CTMs)GERMANY 2006, WORLD CUP2006, WM 2006, WORLD CUPGERMANY and WORLD CUP2006 GERMANY (CasesR1467/2005-1, R1466/2005-1,R1468/2005-1, R1469/2005-1 andR1470/2005-1, June 30 2008)
Google Inc and AmericanAirlines quietly settled theirdispute over the search engine’scontroversial AdWordsprogramme in July (Case07cv487 in the US District Courtfor the Northern District ofTexas). The airline hadinstituted proceedings againstGoogle, claiming that the searchengine had infringed its rightsby allowing competitors topurchase American Airlines’trademarks for use as keywordsto generate sponsored links
A ruling relating to patentsissued in July by a Dutch courthas challenged the commonlyheld belief that the EuropeanCourt of Justice’s (ECJ) decisionin Montex (Case C-281/05,November 9 2006) means thatin-transit goods cannot beseized under the EU CustomsRegulation (1383/2003)
Directory
Make sure that your firm’s details are always accessible to trademark practitioners and brand owners worldwide.
Country correspondent
The new Privacy Law, which came into effect in 2006, enhances the protection of the rights to privacy andpublicity under the Federal Civil Code and the Copyright Law
In Italy, publicity and image rights are governed by the Civil Code and the Copyright Law. Consent to use anindividual’s image must be obtained, especially where the image is exploited for commercial purposes
India is yet to recognize the rights of publicity and image as distinct legal rights. However, individualsmay rely on an accepted framework of IP and other rights to prevent the unauthorized exploitation of theirnames and images
Portrait rights in China are not absolute: fair use of a personality’s image is allowed, as long as the personmaking the unauthorized use exercises care in the manner in which the portrait is displayed
The Federal Court of Justice has recently introduced a new graduated concept of protection under which thegreater the informative value of the image or the social relevance of the incident reported, the more theprotection of the personal rights must take second place
