Features
As the world’s only magazine dedicated to trademarklaw and practice, WTR is uniquely positioned to takethe pulse of the industry. Our second annual GlobalTrademark Survey illuminates exactly wheretrademarks stand in the corporate structure
Having decided that your brand is suitable forextension, the next critical consideration is theconstruction of a trademark licence agreement that willnot have negative repercussions for your brand legacy
In the latter part of 2009, South Africa’s SupremeCourt of Appeal handed down four noteworthytrademark judgments
An analysis of INTA membership and annual meetingparticipation and programmes, compared againstavailable industry data, serves as a useful barometerof the trademark industry
While last year Brazil won headlines for securing theright to host high-profile sporting events, importantcourt decisions on the enforcement of trademark rights,the use of foreign language terms, parallel imports andmarks of high renown received less publicity; but theylie at the heart of the country’s success
One of the most hotly debated topics in European trademark lawover the past few years has been the question of whether theunauthorized use of a trademark as a keyword within a paid onlinereferencing service (eg, Google’s AdWord programme) constitutes ause of that mark which the trademark owner may prevent under EUor national trademark law.
Brand extensions afford companies the opportunity toleverage loyalty to established brands; but diffusionneeds to be the result of a clear and logical analysis ofthe brand's attributes
The advocate general’s opinion on LEGO’s attempts toregister its building block as a 3D mark attempts totackle inconsistency in the approach to registration.Given the uncertainty, many brand owners are askinghow useful such marks actually are
The Court of Justice of the European Union (ECJ)decision on the questions referred by the French Courtof Cassation in joined Cases C-236/08, C-237/08 and C-238/08 found that Google’s use of trademark terms askeywords does not constitute infringement.
The position of Israeli courts on three-dimensionaland well-known marks was clarified in 2009
IP protection in the fashion industry has been subjectto little external regulation to date, with somearguing that taking inspiration from others is centralto the industry’s success. However, things arechanging and there are lessons to be learnt from thepharmaceutical experience
Criticism websites can be problematic for trademarkowners, which are turning to the UDRP morefrequently to tackle such issues. However, this is oneof the main areas of contention among panellists,with conflicting views on how to address thecomplexities involved
A trademark owner has a legal duty to police its mark.But when does good-faith, albeit aggressive, protectionof trademark rights become bad-faith bullying basedon a claim of rights which do not exist?
Guidance issued by China’s Supreme People’s Courthas had a significant impact on the decisions handeddown by the Chinese courts over the past year
WTR’s exclusive survey asked trademark counsel aroundthe world to identify those companies to which theyoutsource their trademark and domain management,and how they rate them. Here are the results
The Bose decision deservedly dominated the headlinesin 2009, but a number of rulings from the TrademarkTrial and Appeal Board also merit close attention
The WTR Industry Awards 2010, which will bepresented at a ceremony in Boston timed tocoincide with the 132nd INTA annual meeting,honour leading trademark teams andindividuals across a range of business sectors.In this issue, we officially unveil the shortlist.
Country correspondent
A number of issues are raised by the registration of ‘.it’ domain names, but these need to be overcome asownership of domain names is crucial to obtain IP rights that can be defended against third parties.
It is not normally feasible to register all possible domain name variations to protect your trademark, sobrand owners need to carefully consider their selection methodology.
The management of a well-structured domain name portfolio is at the heart of successful trademarkprotection and, crucially, will help to prevent costly actions later.
With the ‘.рф’ domain extension approved, it is important that trademark owners plan registrations now,or risk costly enforcement action later.
Use of a ‘.ca’ domain is often expected by Canadian consumers, but there are obstacles to registrationand cybersquatting remains an issue.
The time has come for brand owners to fight back against online infringement.
There are a number of obstacles for foreign companies to overcome when registering a ‘.br’ domain name.
While the Romanian domain name registry has assumed less responsibility than similar bodies in otherjurisdictions, brand owners have a number of legal tools to protect their interests online.
The IL-DRP plays a significant role in the resolution of domain name disputes through out-of-courtproceedings. However, the source of its legal authority and the binding force of its decisions are uncertain.
With more companies doing business in India, ‘.in’ domain names are coming under increasing demand.
News
The latest World IntellectualProperty Organization (WIPO)statistics reveal thatinternational trademark filingsunder the Madrid system fell by16% in 2009, in a starkillustration of the impact of theglobal financial crisis.
The Trademark Technical andConforming Amendment Act2010 provides for a study toexamine “the extent to whichsmall businesses may beharmed by litigation tactics bycorporations attempting toenforce trademark rightsbeyond a reasonableinterpretation of the scope ofthe rights granted to thetrademark owner”. The act wassponsored by Senator PatrickLeahy (Vermont), in whosestate Monster Energy Drinkssought to prevent amicrobrewery’s use of themark VERMONSTER for beer.
WTR presents a round-up of news from around the globe.
The Court of Justice of theEuropean Union (ECJ) has foundthat Google’s use of trademarkterms as keywords does notconstitute infringement, butnoted that the advertiser’s uselikely will – a decision whichcould cause the cost of onlineenforcement to rocket.
The parties negotiating theAnti-counterfeiting TradeAgreement (ACTA) havepublished a full draft of thecontroversial treaty, whichclosely mirrors previouslyleaked texts and has sparkedfears that the World IntellectualProperty Organization (WIPO) isbeing undermined.
Columns
The USPTO allows in-world use to qualifyas ‘use in commerce’ for purposes oftrademark registration, but how shouldbrand owners protect their marks in virtualworlds and drive real-world profits?
The recent Audi decision providestrademark owners with useful guidanceover the development of slogans
New holographic technology isincreasingly being utilized to help brandowners to tackle counterfeiting, but it willsucceed only if used in tandem with goodold-fashioned collaboration
Roundtable
While litigation is usually regarded as a lastresort in the event of infringement,sometimes it is difficult to avoid. In suchcases it is important to ensure that youhave the right strategy in place –particularly when the infringement has across-border dimension. Nowadays, whenproblems can arise in many corners of theworld, the need to think ahead andunderstand how systems work in differentcountries is greater than ever.
