News
WTO decision on US-China dispute over TRIPs raises global questions
USPTO puts a limit to fraud
‘Smell-alike’ opinion from ECJ’s advocate general provokes confusion
Country correspondent
A Community trademark offers theconsiderable advantage of protection inthe European Union’s 27 member states.However, the Community system stillpresents a number of drawbacks that maylead mark owners to prefer otherregistration systems.
A lack of objective guidance from thePortuguese Trademark Office andconflicting decisions from the courts withregard to the classification of goods andservices create difficulties for IP rightsowners seeking to protect their rights inPortugal.
Germany is Europe’s largest economy, socareful consideration should be given asto how best to protect trademarks in thiskey jurisdiction.
Trademark prosecution in Canada presentsmany unique features, including somedisparities with the systems in place in itsneighbour – the United States.
Knowledge of the law is one thing, butmore needs to be considered whenthinking of adopting a new trademark inBenelux. In this article some strategicconsiderations are discussed.
Russian legislation for trademarkprotection has certain peculiarities thatneed to be taken into account whenplanning to enter the Russian market andchoosing a strategy for trademarkprotection.
While Romania has a longstandingtradition of protecting trademark rights,issues relating to its accession to theEuropean Union make the development ofregistration strategies tricky.
Trademark prosecution in Italy differsstrikingly from most other systems. Theprocess will significantly improve once theopposition system, set out in the TrademarkLaw of 1999, is finally implemented.
While trademarks are protected under bothcommon law and federal law in the UnitedStates, obtaining a trademark registrationoffers unparallelled advantages. But brandowners should beware of the quirks of theUS registration system.
Protecting trademark rights in Mexicoposes a number of challenges. The lawsets out strict requirements on the typesof signs that are capable of registrationand the procedures differ in many waysfrom those in place in other jurisdictions.
Marks that are similar and were filed closetogether in time are normally examinedby the registrar of trademarks who willrender a decision based, among otherthings, on the good faith of the applicantsand the extent of use of the marks at issue.
Despite not being part of the EuropeanUnion, Norway’s registration proceduresare, for the most part, aligned with thosein place across Europe. However, there aresome differences so rights holders mustplan their filing strategies with care.
Brand owners seeking to register theirmarks in China need to be aware of thedelays at the Trademark Office, the quirksof the classification system and thepitfalls of transliterating names intoChinese characters.
Selecting the goods and/or services to beapplied for in a trademark application is amore complex task than meets the eye.This is particularly true in Spain wherethe trademark office's practice differsfrom that of other EU IP offices.
Trademark prosecution in Brazil presentsspecific challenges – the most obvious anddifficult of which is the substantial backlogat the Trademark Office.
Columns
Strengthening enforcement, buildingcapacity and raising awareness are all partof the World Customs Organization’s planto curb counterfeiting and piracy. Theprogramme for 2009 includes the creationof extra tools to enhance operations andpromote the exchange of information
As initial interest confusion on theInternet continues to divide the courts,our columnists suggest that they focusless on initial confusion and instead applythe traditional confusion test
As IP budgets are likely to be cut alongwith the budgets of most other in-housedepartments, it is time to review some keyelements to ensure that the trademarkdepartment remains on top form
Features
The global slowdown is starting to bite in the largertrademark services markets of the Nordic region.However, some firms feel that strong cross-borderexpertise will give them an edge in an increasinglycompetitive field
Last year the Israeli Supreme Court issued twodecisions that seemed to reverse the TrademarkOffice’s restrictive practice regarding the registrationof three-dimensional marks. However, theinterpretation of these rulings by the TrademarkOffice indicates that the issue is far from settled
Five years since EU member states agreed toharmonize IP enforcement, WTR reassesses theproject in a major survey of corporate counseland private practitioners
While Chinese law does not specifically recognizedilution, new analysis of 100 of the most recent casesshows that some courts have been applying dilutionprinciples. However, the Supreme Court’s latestguidelines indicate that China is a very long way fromadopting the US approach to dilution
In relation to online infringement, somejurisdictions may appear friendlier to markowners than others. But before assessing thefacts of a case, the relevant court will needto accept jurisdiction. Case law on this issueis developing in Europe
Brand owners and producers in the Arab world arecalling for better protection of geographicalindications. WTR investigates what is being done
The Singapore Treaty signed nearly two years agomainly tackles procedural changes. However, itscoming into force in March acts as a reminder thatstreamlined and harmonized trademark applicationprocedures are far from being a reality across the world
In Autumn 2008 a US district court ordered theforfeiture of marks owned by a gang known as theMongols on the grounds that the gang engaged in illegalactivities. While the forfeiture of property is providedfor under various US statutes, this case raises more thanits fair share of legal and constitutional issues
