Columns
Trademark practitioners should pay closeattention to a recent WIPO decision whichcould set a precedent on the ‘identical orconfusingly similar’ element in domainname disputes
With a number of international sportstournaments heading to the region,counterfeiting in Latin America looks setto surge. For brand owners, now is thetime to review their protection strategies
While many marks avoid becominggeneric due to the use of the term in ‘thetrade’, a 2004 case could still pose futureproblems if courts follow its reasoning
Country correspondent
In the face of increased levels of counterfeiting, Romanian law provides a range of important protectionsfor brand owners.
Although the country lacks both a centralized IP rights database and a standard procedure for borderseizures, a range of anti-counterfeiting measures are available in Brazil.
The Spanish spend an average of €285 million on counterfeit goods. While this poses a challenge totrademark owners, protections are available through both Customs and the courts.
With Italy’s policing bodies boasting internal departments to investigate IP infringement, and a rangeof actions possible, the country is well-geared to tackle the counterfeiting threat. However, brand ownersmust also ensure they police the threat themselves.
Over the last few years, both Customs and the courts have become more proactive in the fight against fakegoods, with the new Industrial Property Code set to provide further clarification on the extent of IP rights.
A number of recent cases highlight the anti-counterfeit protections brand owners can draw on.
While few counterfeit goods actually originate in Russia, brand owners need to be aware of the protections inplace to guard against the impact of infringements.
Like the manager of a professional sports team, trademark owners bear the pain and glory for their teams’success and failures. However, China’s trademark laws and enforcement methods can help you turn that ‘L’into a ‘W’.
Despite a lack of specific remedies for counterfeiting in Canada, there are still options for brand owners.
There are a number of enforcement procedures open to brand owners to enforce their rights, but theselection process is critical to success.
Features
Governments around the world are finally wakingup to the importance of brands. WTR investigates howsome are now strategizing how to propel domesticbrands onto a global stage
The content and format of the Anti-CounterfeitingTrade Agreement (ACTA) negotiations are hot topics ofdebate, with commentators questioning whether theagreement will deal with anti-counterfeiting at all orrather focus on copyright infringement in the digitalenvironment. The secretive nature of the discussions,which has been characterized by a series of documentleaks, has also come under fire. WTR speaks to StanMcCoy, assistant US trade representative for intellectualproperty and innovation at the Office of the US TradeRepresentative (USTR), for the latest on the discussionsand asks industry commentators for their views
While the outcome of the US FDA pilot programme ontrademark approval is not due until 2011 at the earliest,the scheme offers important pointers for thoseconsidering the development of a pharmaceutical mark
While Canadian and US trademark laws have becomerelatively ill suited to preventing parallel imports,there are still instances where their effectiveness canbe maximized
In the last issue of WTR we examined moves to adopt theMadrid Protocol in Latin America. At present, a numberof protections are available to mark owners across theregion – but it is very much a changing picture
A forthcoming international standard will set out bestpractice for brand valuation – and could fundamentallyalter the relationship between the trademark andmarketing functions
The recent seizure of pharmaceutical goods in Europehas reignited the debate over how goods in transit aretreated – with political interests and economic threatsthreatening to muddy the legal waters
Deciding what action to take against infringers can bedifficult enough – but what happens when you have aneconomic partnership with the infringer, as is the casewith supermarket lookalikes?
There are few, if any, downsides to working closelywith customs authorities and enforcement agenciesin the fight against illicit trade. But creating ameaningful relationship is not always asstraightforward as it should be
Recent disputes involving Starbucks and The NorthFace have highlighted the issue of parody as a defenceagainst trademark infringement. While courts havetaken different approaches to defining fair use parody,practical lessons can be learnt from previous cases
News
INTA has responded to criticismthat it tried to “hijack” an onlineconsultation regarding the newgeneric top-level domain (gTLD)programme, and urged theInternet Corporation forAssigned Names and Numbers(ICANN) to reform its mode ofinviting participation
This month, WTR Dailyreported on industry reactionto the decision of the CanadianIntellectual Property Office(CIPO) to open a newconsultation on updating thecountry’s Trademarks Act,with the potential adoption ofthe Madrid Agreement a keyissue. WTR asked CIPO tooutline why the consultationhas been opened at this time
A ruling of the Benelux Office ofIntellectual Property (BOIP) hascreated uncertainty over whatconstitutes genuine use of amark in the European UnionHowever, speculation has alsosurfaced over the motivationsbehind the case.
LEGO has been dealt a new blowin its attempts to register itsbuilding block as a 3D mark,with the advocate general of theECJ arguing that the companyshould not be granted an EU-widetrademark for the shape
WTR presents a round-up of news from around the globe
The study into the functionalityof the European trademarksystem, being conducted byresearchers from the MaxPlanck Institute (MPI), ismoving at a fast pace, withvisits to national offices due toconclude in March. However,much of the debatesurrounding the study hascentred on concerns over itsfocus after a surprisingcontribution from the Office forHarmonization in the InternalMarket (OHIM)
