Features
Since its launch in 2009, the Global Trademark Benchmarking Survey has revealed the brutal effects of the global economic downturn for trademark teams and counsel. This year, there are tentative signs of a rebound. But is all as it seems?
In 2009, WTR presented an assessment of the franchise model and predictions of how it would fare during the recession. Three years on, the authors revisit the market, consider ing how their predictions fared and what has been learnt about the franchising business
During 2011 a number of cases shed light on the interpretation and scope of the statutory protection scheme for well-known marks in Singapore
Technology brands dominate the top 10 list of the world’s most valuable brands, and offer some unique insights into how trademarks and brands can be used to increase corporate value
Mascots offer a unique opportunity to create a brandpersonality. They also require a close relationship withthe marketing department, as well as a careful approach to trademark law
This year’s shortlist for the WTR Industry Awards spansthe whole spectrum of trademark-related activity. Thechief quality that nominees share is the ability to predict and react to the latest industry challenges
It was a busy year in the South African courts, with a number of decisions worth noting for their case law contribution
A number of trademark decisions were issued in 2011,illustrating the difficulties in dealing with bad-faith trademark filings
Decisions issued in 2011 indicate that the Brazilian judiciary tends to accept comparative advertising as a way of ensuring free competition for all market players, provided that certain conditions are met
The second edition of the WTR 1000 builds on the success of the first, identifying the world’s leading trademark legal services providers. In the first of a regular column, the research team identifies key regional trends and presents a selection of the rankings available in the publication
Last year was a busy one for the Court of Justice of theEuropean Union, with online intermediary liability, the use of advertising keywords and the role of customs authorities in relation to counterfeit goods in transit high on its trademark agenda
Television, film and online programme producers are offering increased opportunities to position products in their content. However, the practice of product placement is not without legal risk, requiring careful contractual drafting
Issues surrounding the use of trademarks online featured prominently in 2011’s US case law
While trademark counsel are finding it increasingly hard to clear new product names, the challenge will only grow as marketers seek to create new brands, at new tier levels and in new categories, to meet consumers’ desire for choice
On May 26 2011 the Supreme Court of Canada released its decision in Masterpiece Inc v Alavida Lifestyles Inc (2011 SCC 27) and, in so doing, clarified important legal principles concerning the interrelationship in Canada between common law trademark rights and those rights which flow from registration. Prior to this decision, very little jurisprudence had dealt with the differences, overlaps andinterrelationships between rights flowing from registration and those existing at common law through use.
As WTR went to press, ICANN had not yet revealed the list of first-round generic top-level domain applications. However, with the window now closed, it is useful to look back at the application process, costs and driving factors – as well as the objections and dispute resolution processes in place for nonapplicants, and the defensive strategies available
Columns
Could Canada’s sound decision lead to a new approach on non-traditional marks? The Canadian Intellectual Property Office (CIPO) has long struggled with concepts related to registrations for non-traditional trademarks.
The dispute between Apple and Proview over the IPAD mark was ongoing as WTR went to press. However, it offers some important learnings for brand owners.
When poking fun at a rival becomes infringement – lessons from the Specsavers/Asda dispute
Country correspondent
Important changes to ‘.ca’ dispute resolution policy make it more accessible to trademark owners
In the ever-expanding online world, brand owners need to be ready to fight infringement at the top and second levels
With the advent of new gTLDS, brand owners need to create a multi-faceted domain name management strategy
The United Kingdom is one of the most cost-effective jurisdictions in which to deal with domain name abuses
A range of national domains are available in Russia, with disputes between IP owners and domain name administrators played out in the courts
While the Romanian Top-Level Domain Authority oversees the country’s domains, brand owners should consider whether to utilise its dispute resolution procedures or utilise other methods
Faced with a range of domain name variations, brand owners doing business in China need to carefully considertheir selection methodology
Preparing for the impact of new gTLDs on domain name management in the United States
In addition to a clear ‘.in’ Domain Dispute Resolution Policy, the courts have laid down some consistent guidelines for the treatment of domain name disputes
In creating a domain name strategy, brand owners need to ensure they are taking a national and international perspective
News
With a number of EU countries reviewing their position on the Anti-counterfeiting Trade Agreement (ACTA), the act is to be referred to the ECJ to assess whether it is compatible with the European Union’s fundamental rights and freedoms.
The Canadian Intellectual Property Office (CIPO) hasannounced that it is now accepting applications to register sound marks. With a consultation period on the country’s Trademark Regulations ending on April 23, there could soon be further changes to the treatment of non-traditional marks.
The US Department of Commerce has issued a reportidentifying the sectors that generate intellectual propertyand the impact of those sectors on the US economy. At a time when the debate over IP rights rages on, the study sheds light on the contribution of intellectual property to economic performance – with trademarks playing a central role.
For regular jurisdictional updates, see WTR Daily. Delivered straight to your inbox, WTR’s regular email news service provides legal updates, industry analysis and the editor’s pick of the best trademark content from around the globe
In Helena Rubinstein SNC v OHIM (Case C-100/11 P),Advocate General Mengozzi has confirmed the General Court’s finding that the marks BOTOLIST and BOTOCYL would take advantage of the distinctiveness and reputationof the earlier BOTOX marks.
In Celaya Emparanza y Galdos Internacional SA v Proyectos Integrales de Balizamiento SL (Case C- 488/10), a reference for a preliminary ruling by a Spanishcourt, the Court of Justice of the European Union (ECJ) hasclarified the scope and effect of Article 19(1) of the CommunityDesign Regulation (6/2002) incourt proceedings brought by theholder of a registeredCommunity design (RCD) againstthe holder of a later RCD.
