Features
Now in its fifth year, the WTR Global BenchmarkingSurvey takes the pulse of the industry. While it is truethat the hard times are far from over, some positiveshave come out of adversity – not least a greatercorporate appreciation of trademark value. But there’sstill plenty of work to be done
The trademark landscape is consistently being shapedby political movers and shakers, consumer trends,industry organisations and wider influences. WTRgazes into its crystal ball to see who and what arelikely to transform the trademark environmentover the next 18 months
The cloud is an environment that trademark counselneed to monitor. Brand owners will still face the sameclearance, prosecution, enforcement and priorityissues they have historically faced – albeit in the cloud
This year’s shortlist for the WTR Industry Awardsspans the spectrum of trademark-related activity.However, if there is one common trait that ournominees share, it is the value that they are addingto their respective organisations
Over the last 12 months, the European Court of Justicehas provided several clarifications related to bothregistrations – in particular, the issue of specificationof goods and services – and defences against claims forrevocation on the grounds of non-use
A string of recent decisions suggests that Brazilianjudges are wising up to trade dress infringement.Although damages are still modest, it is hoped thatthis will also shift within the next few years
Ensuring that a brand is licensed correctly and thatan appropriate royalty rate is in place is essential tosecure the longevity and success of a business. Correctcalculations are therefore critical
Significant developments in the last year – fromcase law that allows the registration of sound marksto a bill with important new anti-counterfeitingprovisions – could affect the way that all rightsholders do business in Canada
A groundbreaking verdict from the Beijing HighCourt could provide crucial guidance on assessingsimilarity between not only trademarks, but also thegoods that they designate. The court found that whiledue attention should be paid to the official guidance,simple market facts should also be considered
If they are not already, Chinese brand owners arepoised to expand westward into the lucrative USmarket. They will boost their chances of successby taking care to define and differentiate theirown products and finding strong US licensees topartner with
Over the last year South Africa’s Supreme Court ofAppeal has issued several decisions that consolidatean already solid body of trademark case law. There areindications that 2013 could also see it provide muchneededguidance on tests for confusing similaritywhen dealing with similar goods and services
Trademark cases continued to make headlines inChina during 2012. Malicious registrations of celebritynames, a multimillion-dollar settlement by Apple andthe soft drinks case that sparked a national debateshow that trademarks are still big business
The Supreme Court’s affirmation of the dismissalof Nike’s own infringement suit after Nike hadissued a broad covenant not to sue not only allowedthe sportswear giant to sidestep an invalidationcounterclaim, but also suggests a route whereby rightsholders having second thoughts can withdraw tofight a different battle another day
Sino-foreign joint ventures are the best way toproduce internationally branded goods for middleclassconsumers in China. Although the relationshipcan be tricky to manage, some basic rules can make itharmonious and profitable for both partners
Parallel imports, overseas brands and the registrabilityof building names came under scrutiny from theAustralian courts last year. As some of these casesdemonstrate, the application of even long-establishedtrademark protection principles can evolve
Country correspondent
Recent Federal Court of Justice decisions have held that the validity of a sub-licence is independent of that ofthe original licence. Rights holders should thus take action to remain in control of their intellectual property
Understanding what trademark use means in Canada and how such use is best controlled by a notifiedlicence agreement will help in retaining trademark rights in Canada
Licensing can add considerable value to a brand. But some pitfalls must be avoided
Italian jurisprudence is keen to protect licensors’ rights – the key is ensuring that attention is paid tolicence agreements
Foreign companies seeking to license or assign trademarks in China should be aware of the country’sidiosyncrasies – such as the need to obtain the authorities’ approval for an assignment to be valid
The current practice of the Mexican Administrative Authority in connection with use renders theassignment of trademarks potentially risky
Those considering licensing in Poland should acquaint themselves with the country’s specificities –in particular, the issues surrounding rights assignment and termination
Finnish games producer Rovio is a prime example of successful licensing with its Angry Birds, using someunorthodox methods along the way
Those embarking on trademark licensing in Russia for the first time need to understand the legal frameworkand practical requirements before they can enjoy some of the benefits
While the legal framework governing trademark licensing in India has been liberalised, brand ownersshould remain vigilant when drafting their agreements
A licensing agreement in itself offers no guarantee of saving a trademark from the risk of abandonment.The licence must include specific quality control provisions
A checklist to follow when engaging in trademark licensing in Romania
News
The Court of Appeal of Englandand Wales has handed downjudgment in Interflora Inc vMarks & Spencer PLC ([2013]EWCA Civ 319). This decision– the second judgment ofthe court in this case on theadmissibility of evidencefrom witnesses identifiedthrough surveys – seems tomake it even harder to adducesurvey evidence in trademarkinfringement cases.
In Fédération CynologiqueInternationale v FederaciónCanina Internacional de Perrosde Pura Raza (Case C-561/11),the European Court of Justice(ECJ) has held that that a ‘thirdparty’ under Article 9(1) of theEU Community TrademarkRegulation (207/2009) includesthe owner of a later registeredCommunity trademark (CTM).
The Intellectual PropertyLaws Amendment (Raisingthe Bar) Act came into effectin Australia on April 15 2013.The most important changeis the introduction of a newopposition procedure.
Google has revised its AdWordstrademark policy to lift arestriction on using trademarksas keywords in a number ofcountries. Starting April 232013, it will no longer preventadvertisers from selectingthird-party trademarks as akeyword in advertisementstargeting Australia, Brazil,China, Hong Kong, Macau,New Zealand, South Koreaand Taiwan. This means thatGoogle’s AdWords trademarkpolicy is now harmonisedworldwide.
The Canadian governmenthas introduced Bill C-56 –the Combating CounterfeitProducts Act – which proposessignificant changes to theTrademarks Act and CopyrightAct. The bill aims to “protectCanadian consumers, Canadianmanufacturers and retailersas well as the Canadianeconomy from the health andeconomic threats presentedby counterfeit goods”, and alsoprovides for the registration ofnon-traditional trademarks.
The European Commissionhas published its proposalsto amend the EU CommunityTrademark Regulation(207/2009), the EU TrademarkDirective (2008/95/EC) andEU Regulation 2869/95/EC onthe fees payable to the Officefor Harmonisation in theInternal Market (OHIM). Theproposals are designed to “maketrademark registration systemsall over the European Unioncheaper, quicker, more reliableand predictable”.
The Trademark Clearinghouse– the rights protectionmechanism built into theInternet Corporation forAssigned Names and Numbers’new generic top-level domain(gTLD) programme – hascommenced operations.
United KingdomThe UK Intellectual Property Officehas launched a consultation to obtainstakeholders’ views on the appropriateprocedural changes for the introductionof a fast-track opposition procedurewithin the Trademark Tribunal. Theconsultation outlines proposals for thefast-track procedure and seeks viewson the introduction of a refundableappeal fee for inter partes appeals tothe appointed person. The deadline tosubmit comments is May 17 2013.
Roundtable
Practitioners from China, Europe and the United States discuss the trademark issues involved in advertising, and how counsel can ensure that their voice is heard
Columns
The IP Laws Amendment Act is designedto boost IP protection across theboard. Provisions aimed specifically attrademarks include an overhaul of theopposition process, improved borderprotection measures and the extension oflegal privilege to trademark attorneys
The long-awaited regulation for theEthiopian Trademark Registration andProtection Proclamation means that workcan begin on modernising Ethiopia’strademark regime. However, there maybe a few sticking points in the transition –not least the fact that the much-discussedIP Gazette has yet to launch
What the draft agreement on a unitarytrademark in Belarus, Kazakhstan andthe Russia Customs Union may mean forbrand owners
