Features
WTR’s second annual non-legal trademark servicessurvey assesses industry needs and asks whether –against a backdrop of squeezed budgets, growingworkloads and an increasingly complex trademarkenvironment – service providers are meeting theneeds of their clients
Guidelines governing the protection of geographicalindications (GIs) and protected designations of origin(PDOs) are in a state of constant flux. For someindustries – such as the wine sector – the picture iscomplicated further by additional requirements. Theinterplay between GI, PDO and trademark protectionmakes it critical to stay on top of the latest regulations
While the ITC can provide significant injunctive reliefto holders of registered trademarks whose trademarksare infringed, it is not for everyone. The selection ofthe right forum will depend on a number of factors
INTA’s Design Protection Conference featured anumber of important lessons for trademark counsel– not least ensuring that the need for IP protection isnot overlooked by corporate designers
Although it was held in one of the world’s oldestcities, this year’s MARQUES annual conference was allabout looking to the future, with sessions tacklingtrademark protection in the new gTLD environment,the development of trademark offices and howgeolocation technology will pose unprecedentedbrand protection challenges
The prevailing view among trademark owners is thatcounterfeiting must be tackled without compromise.But some academics are suggesting that brand ownersmay have got the wrong idea about fakes
29 pointers on how to effectively achievethe transfer of trademark rights
Licensing deals can provide trademark owners witha much-needed revenue stream – but equally, a lotcan go wrong. WTR asked a range of practitioners toprovide their top tips for successful licensing and tooutline key jurisdictional requirements
While reputation and brand may appear to besynonymous, the nuances have implications fortrademark and IP counsel seeking to protect clients’interests – particularly when reacting to crises andquantifying the impact of competitive incursionson a brand
While China’s trademark system has significantlyhelped the country’s economic development, changeswill be necessary if it is to continue to make asignificant contribution to the evolution of aknowledge-based economy
For non-profit organisations, the redirection of surplusrevenues to achieve the organisational mission isparamount, but equally important is an emphasis ontrademark protection. Failure to do so risks yourorganisation falling foul of some of the problems thathave plagued others
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
In Christian Louboutin SA v YvesSaint Laurent America HoldingInc (11-3303-cv), the US Court ofAppeals for the Second Circuithas held that a single colour isprotectable as a trademark forfashion items in certaincircumstances – withrepresentatives for both partieswelcoming the decision.
Country correspondent
While protection can be granted without registration, as well as offering opportunities to brand owners,unregistered protection is not without risk
While registration brings a number of advantages, brand owners in Canada can utilise the action of passingoff to protect unregistered rights
Protection for unregistered trademarks and other commercial signs is available in China. However, in eachcase there will be skills and tricks to juggle possible legal grounds and the available evidence
In Russia, legal protection of commercial designations corresponds to international practice; in time, legalpractice will develop to the extent that all rights holders will be effectively protected
Mexico follows a ‘first in time is first in right’ approach. While a trademark registration is not mandatory in orderto use it or to initiate legal claims against third parties, it brings some important benefits
The system of IP protection in Italy is rigorous and effective – but rights holders need to adopt the correctmeasures to protect their marks
In the United Kingdom the protection of unregistered trademarks hinges on the ability to prove goodwill.While this can be difficult to establish, it is the one factor over which traders have the greatest control
With protection for well-known trademarks and unregistered trademarks now possible in Romania, case lawcontinues to develop
The Indian courts have gone beyond the text of the statutes to protect the worldwide reputation that anytrademark or commercial sign can acquire by virtue of its use, promotion or advertisement
Given the strong tradition for protecting unregistered trademarks in the United States, practitioners musttake a different approach to filing practices and enforcement from that adopted in first-to-file jurisdictions
Columns
Critics of new Malaysian legislationsuggest it will restrict the ability of brandsto interact with customers online.However, there are strategies that rightsholders can employ to minimise risk
While there are benefits in assigningtrademark rights only in respect of certainwares/services, in Canada this can provechallenging
