News
ASEAN A memorandum of cooperation on industrialproperty has been concluded between the Association ofSoutheast Asian Nations (ASEAN) member state IPoffices and the Japan Patent Office (JPO).
Advocate General Sharpston has handed down her opinion in Leno Merken BV v Hagelkruis Beheer BV (C-149/11, July 5 2012), advising that use of a Communitytrademark (CTM) within the borders of a single member state is not, of itself, necessarily sufficient to constitute ‘genuine use’ of that mark.
Australia is to press ahead with its plain packaging law after the High Court rejected an appeal by BritishAmerican Tobacco, Philip Morris, Japan Tobacco and Imperial Tobacco against the Tobacco Plain Packaging Act, which was approved by the Australian Senate in November 2011.
The European Parliament has voted to reject the Anticounterfeiting Trade Agreement (ACTA). Despite a last-minute request to delay the vote until the ECJ has ruled on whether ACTA is compatible with EU law, Parliament had its say: there were 478 votes against the treaty, 39 in favour and 165 abstentions.
The decision of the US Court of Appeals for the Seventh Circuit in Sunbeam Products Inc v Chicago AmericanManufacturing LLC (Case 11- 3920, July 9 2012) represents a major victory for trademark licensees.
In Pie Optiek v Bureau Gevers (Case C-376/11, July 19 2012), the ECJ has held that agreements authorising the registration of ‘.eu’ domain names were moreakin to contracts for services than to trademark licences, and that such ‘licensees’ should not have been allowed to register ‘.eu’ domain names during the sunrise period.
Features
Advocate General Sharpston’s opinion in Leno Merken BV v Hagelkruis Beheer BV (Case C-149/11) stated that the “use of a CTM within the borders of a single member state is not, of itself, necessarily sufficient to constitute genuine use of that trademark, because the territorial scope of the use is merely one of the factors to take into account in the assessment”.
Are iPAD and GOOGLE in danger of going the way ofzipper and cellophane? Time to assess the true risk ofgenericide
The eagerly awaited IP TRANSLATOR decision led toimmediate changes in OHIM practice, but how willnational offices react?
The promiscuity of a brand’s licensing activities has asignificant impact on its valuations, with a number ofkey factors to be considered
As efforts continue to develop protection for traditional cultural expressions, brand owners need to ensure they are tracking the latest legal developments as they develop new trademarks and brands
In an uncertain economic climate, licensing canprovide a much-needed fillip to brand exposure andadd to the bottom line. But not every brand extensionis a guaranteed success. Counsel and brand strategistsmust remember that the push for extra value cansometimes go too far
WTR sits down with Antonio Campinos, president ofthe Office for Harmonisation in the Internal Market(OHIM), to present users’ questions
As brand owners consider trademark protectionstrategies for the world of new generic top-leveldomains, analysis of the applications revealed byICANN can inform future tactics. It also provides aninvaluable insight onto how the future onlineenvironment will shape up for trademark owners
The chair of the Cooperation Fund, Lord Mogg, explains what is behind the strategy to create common IT tools for IP offices and how this will help users
Over the following pages, private practice trademark counsel from 20 jurisdictions outline the benefits of their countries’ Community trademark courts
With the applications known, brand owners need toprepare for the potential challenges posed by theexpanded online space. Ongoing attention to thelandscape of applications and new registries, andcareful planning, will allow brand owners to adapttheir domain name and enforcement strategies tomeet these challenges
Given the increased judicial and administrative focus on developing strong Chinese brands, enhanced protection is increasingly available for all trademarks that have been used and have established a reputation in China. However, in order to receive protection, a number of clear steps must be taken
As the ‘trademark bullying’ label continues to divide,the fine line between being a trademark hero or bullyis becoming increasingly blurred
The surge in popularity of own-brand products hasbeen matched by improvements in their packaging, leaving brand owners increasingly concerned about the risk of lookalikes. WTR examines how the marketplace is evolving and the future challenges for brand owners
Columns
The advocate general’s opinion in Leno Merken BV v Hagelkruis Beheer BV addresses the issue of genuine use in the Community – but does it provide a usefully flexible test or one that is simply too uncertain to be helpful?
Changes to Poland’s Civil Procedure Code should substantially improve the enforcement of IP rights in the country
Country correspondent
While image rights have a history of protection in Romania, the legislation has evolved over time, with lastyear’s Civil Code representing a fresh approach to the issues surrounding individuals’ rights
While personality rights are recognised in Canada, a number of questions remain
Image rights in Italy have been afforded different levels of protection in different industries
With a thriving film industry in India, the expectation would be that publicity and image rights lawsare firmly established. But is this the reality?
In Germany, balancing the protection of personal rights with press freedom frequently leads to controversialcourt judgments
Publicity and image rights have been inadvertently protected under the Copyright Law, which does not grantspecial treatment for celebrities’ image rights
Until Parliament legislates on the issue, UK rights holders are subject to uncertain protections for publicityand image rights
While the idea of image rights is relatively young, Russia has developed a clear approach to publicityand related rights
There will always remain a fascination and admiration for those in public life – alive or dead. Similarly, therewill be always be distinct rules and practices to follow when using the image of another
Right of publicity law is a developing and uncertain area of law in the United States. A federal statute in thisarea would increase predictability of results and decrease legal costs
Roundtable
Global trademark practitioners offer practical guidance on the creation and execution of a resilient social media strategy
