Features
This year’s Global Benchmarking Survey reveals thechanging fee structures of trademark legal servicesand where brand owners are expecting more of theirexternal counsel. For exclusive statistics andenlightening opinions, read on
A series of court decisions has clarified the question of relative grounds for refusal
This year’s BrandFinance Global 500 suggests that theUS economy is well on the road to recovery. However,an equally noticeable trend is the rise of thedeveloping world as a source of brand value growth.To understand the significance of these findings, it isimportant to consider the methodology employed incalculating brand value
In theory, coexistence agreements offer companies an invaluable way to navigate crowded trademark registries. However, in Europe, uncertainty remains over their treatment by courts and trademark offices
While case law addressing coexistence agreementsis scarce, the current Trademark Review and Adjudication Board debate on the issue offers some useful pointers
Competition for market share has led to a number ofinteresting cases in India, with the courts willing todepart from previous practice
Five cases, offering guidance on licensing, onlineinfringement, dilution, fraud on the USPTO andabandonment issues, stood out in 2010
In 2010 the Beijing courts accepted a total of 8,923 first instance IP cases and concluded 8,855. Thisi ncrease has resulted in some significant pointers for international brand owners wishing to secure protection in China
While Europe awaits the ECJ’s Nokia decision on goods in transit, the Argentine courts have already taken a tough stance in similar circumstances
In 2010 national courts began to apply the ECJ’sguidance on the Google AdWords cases. Although it isstill early days, a number of conclusions can be drawn
The WTR Industry Awards 2011, which will bepresented at a ceremony in San Francisco timedto coincide with the 133rd INTA annual meeting,honour leading trademark teams and individualsacross a range of business sectors. In this issue,we unveil the shortlist
During the year in which Israel joined the MadridProtocol, the registration of advertising slogans andboundaries of confusing similarity came underparticular scrutiny
In a crowded field, and with ever-expanding product offerings, a number of strategies are available to US telecommunications companies to protect disused brands and, crucially, increase commercial advantage
Brand value and identity are intrinsically linked, yetoften the temptation is to refresh marks, alter theirpresentation or, as seen more recently, exclude theword element from a logo. While such moves canreinforce the identity of a brand or help prepare forentry into new markets, they can also backfire
While China’s three systems of geographical indication registration may prove challenging to foreign brand owners, they are playing an important role in the country’s economic development
A review of registered Community design decisionsprovides important guidance to trademark counselseeking to maximise registration, and opposition,success
As Pernod Ricard and Bacardi assess the fallout from amajor US ruling on the controversial law that strikes atthe heart of their dispute over the HAVANA CLUBtrademark, WTR speaks exclusively to counsel fromboth sides
Country correspondent
Litigation in the United Kingdom can becostly and time consuming. Many IPdisputes are therefore resolved bysettlement. However, where a disputecannot be resolved amicably, one or bothparties may consider that the disputewarrants court intervention.
There are no administrative remedies available for the enforcement of IP rights in India. Therefore, the possible options for seeking relief are through the civil or criminal route, or both.
Romania has experienced rapid growth in IPrights litigation over the past 10 to 15 years,with a particular focus on trademarks, patentsand copyright (in 1995 there were only around20 to 30 trademark cases in total). The trendcontinued after Romania joined the EuropeanUnion in 2007, and there are an increasingnumber of cases in which Communitytrademark rights are at stake.
US trademark owners can enforce theirtrademarks against an infringer undereither Section 32 or 43(a) of the Lanham Act(15 USC Section 1051 and following). Section32 provides for relief from the use incommerce of any copy or colourableimitation of a registered trademark inconnection with the sale of, or offering forsale of, any goods or services that is likely tocause confusion or mistake, or to deceive.
Just as the trademark marketplace is constantly changing, the law is always developing. Effective trademark enforcement therefore requires that counsel carefully consider the surrounding circumstances of each case.
Under Chinese law, three types of remedial measure are available to protect trademark rights: civil, administrative and criminal proceedings. A foreign legal or natural person may use these to protect its lawful rights in a trademark
Have you ever thought about the best wayto defend your trademark in Mexico? It isnot easy to recommend a specific path tofollow in order to safeguard or preserve atrademark right, since rights holders canchoose from a wealth of diverse strategies toprotect marks or tackle infringement.
Italy is the ideal forum for the protection of IP rights in the European Union, thanks to judicial expertise, predictability of rulings and the short timeframe in which decisions are issued
In the event of a trademark or companyname (trade name) being infringed, theproprietor can take certain action againstthe infringer, including a cease and desistaction, claims in damages or proceedingsfor the disclosure of information and fordestruction.
In September 2010 Russia’s High Arbitrazh Court submitted to Parliament a draft bill which provided for the creation of an Intellectual Rights Court, scheduled to arrive by 2012. In the meantime, rights holders have arange of options for enforcing their rights.
News
For regular jurisdictional updates, see WTR Daily. Delivered straight to your inbox, WTR’s regular email news serviceprovides legal updates, industry analysis and the editor’s pick of the best trademark content from around the globe.
The latest advocate generalopinion on keyword advertisinghas recently been issued inInterflora Inc v Marks & Spencerplc (Case C-323/09), a referencefor a preliminary ruling by theHigh Court of Justice of Englandand Wales. Most commentatorsview the opinion as a victory forInterflora, although some arguethat the advocate general did notthink that what Marks & Spencer(M&S) is doing is unfair.
The Max Planck Institute forIntellectual Property andCompetition Law has publishedits Study on the OverallFunctioning of the EuropeanTrademark System, withgenuine use and therelationship between the Officefor Harmonisation in theInternal Market (OHIM) andnational offices at the centre ofsubsequent discussion.
The Internet Corporation forAssigned Names and Numbers(ICANN) has set a June launchdate for the new generic topleveldomains (gTLDs), followingthe failure to launch theprogramme at its Marchmeeting in San Francisco.
Advocate General Cruz Villalón’sopinion in Nokia Corporation vHer Majesty's Commissioners ofRevenue and Customs (Case C-495/09), concerning theinterpretation of the EUlegislation governing actions bythe customs authorities againstinfringements of IP rightswhere goods are in the ‘externaltransit’ procedure, has statedthe need for “the beginnings ofsome proof” that goods mayinfringe an IP right.
Last issue WTR’s cover storyfocused on attempts to findthe link between trademarksand innovation
Roundtable
Global trademark practitioners – from industry, private practice and the trademark services sector – tackle the complex issue of trademark protection strategies in the new gTLD online environment
Columns
Despite calls for seized counterfeit goodsto be donated to charity, set conditionsshould be met in order to protect rightsholders and those receiving the goods
Can obvious counterfeit product passingthrough UK Customs in transit be destroyedunder EU Customs laws? If followed by theECJ, the recent advocate general’s opinionwill not go as far as brand owners need
Host user-generated content and you mayfind yourself facing a variety of potentialvicarious liabilities
