Features
With summer holidays already a distant memory,almost 600 trademark counsel descended on Berlinfor the MARQUES annual conference this September.WTR presents the highlights of the programme,starting with the debate over changes to Google’sAdWords policy
While brand owners may be apprehensive aboutGoogle’s decision to bring its AdWords policy inEurope into closer alignment with the position in theUnited States, should the move be welcomed withopen arms?
While stormy economic conditions may make cobrandedventures more enticing, brand owners mustconsider all the potential trademark issues that can arise
Asia is becoming an increasingly important market fortrademark owners. However, when entering intotrademark licensing agreements, brand owners shouldnot ‘copy and paste’ the rulebook developed in the West
The Trademarks (Amendment) Bill 2009 takes Indiaone step closer to accession to the Madrid Protocol.Although this is a positive development, questionsremain about the national office’s ability to deliveron the detail of the bill
With more companies highlighting ‘green’ credentialswhen promoting their products, the authorities areclamping down on unqualified claims. For trademarkcounsel, the use of environmental claims should beclosely monitored
This autumn, WTR conducted an in-depth survey to find out how industry ispreparing for the launch of new gTLDs. The data reveals how outside counselare devising new business models, what marketing professionals really thinkand how brand owners are bracing for their greatest trademark challenge yet
As Libya endeavours to attract overseas investment,key questions centre on the level of trademarkprotection on offer and how the regime compares toothers in the region. Do the latest changes go farenough and will brand owners trust a regime thatpreviously discarded over 20 years of registrations?
The United States and European Union take differentapproaches to health claims in trademarks and onpackaging. For trademark counsel, an appreciation ofthese differences is key to avoiding costly mistakes ineither region
The fluid mark stands at the crossroads betweenmarketing and trademarks – presenting dangers toboth when logos are tampered with
WTR hears both sides of the Siemens story in anexclusive interview with the company’s trademarksand brand teams
News
Google’s liberalisation of itsAdWords programme in Europe,allowing advertisers to includethird-party trademark terms inadvert text, has been “stronglycriticised” by trademark owners.
WTR presents a round-up of news from around the globe
The full text of the Anti-Counterfeiting Trade Agreement(ACTA) has been published,following the conclusion of thefinal round of negotiations inJapan on October 2 2010. Themeeting in Tokyo saw the partiesto the treaty reach agreement inprinciple, with only a few issuesoutstanding.
Use WTR’s letters page to comment on issues raised inthe magazine and WTR Daily, and to air your views onthe industry.
Wubbo de Boer has stated thatnational offices will need tojustify the receipt of Office forHarmonisation in the InternalMarket (OHIM) funds under the50% renewal split arrangement,arguing that it is not enough forthe agency to warrant payingout money on the basis that ithad to “bribe” national officesto agree to changes under theSeptember 2008 compromisesolution.
Michel Barnier, the Europeancommissioner for the internalmarket and services, has wadedinto the genuine use debate,sending a stern warning tonational offices challenging theCommunity trademark (CTM)system.
Country correspondent
In Italy, the Civil Code and the IndustrialProperty Code ensure protection forunregistered marks, as well as otherunregistered commercial signs (eg, insignia,business names and company domainnames), but such protection is subject tostrict conditions and a number ofrestrictions.
While trademark rights can exist whether a trademark is registered or not, the advantages afforded toregistered marks, whether in respect of enforcement, remedies or provincial regulations, make registrationthe recommended route to follow.
In the United Kingdom, a brand owner canprotect its unregistered trademarks andcommercial signs through the common lawright of passing off. This concept has beendeveloped through case law andmanipulated to encompass a wide variety ofanti-competitive practices.
Russia is a first-to-file country andtherefore, according to Russian legislation,trademark rights apply from the momentthat the mark is state registered. No rightsderive from the use of an unregisteredtrademark. However, when Part IV of theCivil Code came into force in January 2008,it afforded a degree of protection tocommercial indications or signs.
All trademarks that are used in economicactivity may be grouped into certaincategories. This article focuses on registeredtrademarks (ie, those which have beengranted protection by a decision of thePatent Office) and trademarks which havenot been registered (ie, no official decisionon granting protection has been issued), butwhich enjoy similar protection.
Unregistered trademarks are protected under Romanian law if they are recognised as well known. Othercommercial signs, such as trade names and company logos, enjoy some level of protection under trademarkand unfair competition law.
In the Spanish legal system, exclusive rightsover a trademark or trade name are obtainedthrough registration. Such registrationconfers on the proprietor exclusive rights inthe relevant sign and allows it to preventunauthorised third parties from using thesign in the course of trade.
In the United States, protection is availablefor unregistered marks under common lawand the federal statute known as theLanham Act (§ 43(a)(1), 15 USC § 1125(a)(1)(1989)). The owner of a valid butunregistered mark can seek recourse againstthe copyist in state and federal courts.
Unregistered trademarks, such as tradenames, get-ups, trade descriptions, labellingor packaging and other commercial signs,are protected in Israel under variousgrounds and actions.
In India, the primary legislation governingtrademark protection is the Trademarks Act1999. The right to institute infringementproceedings under the act is available onlyto the proprietors of a registered trademark.
There are two types of unregisteredtrademark. The first, type A, is a trademarkthat is not registered in any class of goods orservices within its jurisdiction; the second,type B, is a trademark that is registered in oneor more classes or subclasses, but not in theclass or subclass concerned in the dispute.
Trading under an unregistered mark isnever a good decision. However, there arecertain rights which, under Mexican law,may allow you to continue its use.The way in which commercial signs areprotected varies from country to country.However, all legislation follows commonobjectives.
In Portugal, in order to obtain exclusiverights in respect of a distinctive sign used intrade, a decision of grant must be issued bythe competent administrative body, theTrademark and Patent Office. The sign mayconsist of a trademark or a logotype – aPortuguese category of rights which, sincethe revision of the Industrial Property Code(Decree-Law 143/2008), includes names andemblems of establishment.
Columns
Media coverage of a recent British Journal ofCriminology article focused on claims that itencouraged the purchase of fake luxurygoods and suggested that counterfeitsbenefit both consumers and brand owners.However, the author notes that theheadlines were deceiving and wantsindustry to assist in ongoing research
Despite the difficulties in registeringcolour marks, the Whiskas Purple caseprovides comfort to brand owners seekingto protect colours
On the back of recent ECJ decisions,Google has implemented a number ofchanges to its keyword advertisingsystem. However, is the upcomingInterflora ruling likely to signal anotherchange in the European legal landscape?
