Features
As part of our annual OHIM focus, WTR polled theoffice’s top filers to gauge their perception of itsperformance and address some of the most pressingissues in the European trademark industry – andasked OHIM to provide an update on its activities
It is estimated that approximately 96% ofIndonesians use social media, a rate higher thanany other country in the world. As well as offeringan important communication tool for brands, thisnecessitates a tailored social media plan to protectinga brand’s intellectual property, goodwill andreputation in the country
Paul Maier, director of the EU Observatory onInfringements of Intellectual Property Rights (OHIM),reflects on the first year of the Observatory, andoutlines the initiatives currently being undertakento support users
Industrial design protection is progressively beingviewed as a core component of IP strategy for manyconsumer-facing businesses. Trademark counsel havea golden opportunity to add corporate value by takingthe initiative on design rights
TM Margellos, coordinator of the OHIM mediationteam, presents an update on the office’s mediationservice, launched two years ago
In China, an effective anti-counterfeiting strategydemands much more than enforcement of the law.It is therefore crucial for luxury brands to trackenforcement trends and evolve their strategiesaccordingly
In efforts to secure protection for their threedimensionaland colour trademarks, are trademarkcounsel pushing the boundaries of trademarkprotection?
India’s accession to the Madrid Protocol is the latestdevelopment to focus brands’ attention on thecommercial opportunities in the market. However, anumber of critical trademark issues are involved inselling or acquiring brands, investing in companiesand entering into licence arrangements in India
Considering the most recent decisions, it seems thatselection of a geographical mark should be based notonly on the current position, but with one eye firmlyon the future
When creating an anti-counterfeiting programmefor the region, factors such as the legal system,the political, economic and social environmentand the infringer’s modus operandi are importantconsiderations
Recent decisions have contributed to a shift in thetreatment of territoriality in US trademark law,with US courts increasingly focusing on whetherforeign infringing activities have left a ‘dent’ in theUnited States
Country correspondent
Trademark owners enforcing their rights in Turkey should consider the following tips when formulatingtheir strategy
A number of options are available to brand owners seeking to enforce their rights in Canada
It seems that everyone is talking about trademarks in China. Far and away the most common questioncontinues to be: is it really possible to enforce trademarks in China?
A number of factors have to be considered when creating an anti-counterfeiting strategy – but the law isthere to help
The Polish legal system offers different tools to protect IP rights – the key is striking the right balancebetween prevention and speedy responses to infringement
The extraterritorial reach of the Lanham Act is a viable option against foreign infringers, with circuit courtsshowing a trend towards broadening the scope of application
Analysis of recent cases illustrate the effectiveness of the Italian system in the protection of designs, bothregistered and unregistered
Working with law enforcement authorities and courts in India can be challenging, but by adopting the rightapproach, clear results can be achieved
Enforcement of trademark rights online remains a challenge and advertisers would be well advised toobserve the limits established on the use of keywords by Germany’s Federal Court of Justice
Despite the limitations of provisional measures in Mexico, when correctly planned and executed they canprove an adequate tool to enforce IP rights
Trademark rights can be enforced through prosecution or judicial proceedings, leaving rights owners witha number of options to consider
The establishment of a specialised IP court has the potential to improve significantly both the quality ofdecisions and the way that cases are handled on a practical level
The enforcement options for trademark owners are constantly evolving. When considering approaches tothe resolution of a particular problem, rights holders should balance a number of considerations
News
The fracture between theGovernment AdvisoryCommittee (GAC) andtrademark owners overgeographic terms was apparentduring ICANN’s Durbanmeeting in July.
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 Specsavers InternationalHealthcare v Asda Stores Ltd(Case C-252/12), the EuropeanCourt of Justice (ECJ) has heldthat colour is relevant tothe global assessment of thelikelihood of confusion andunfair advantage.
The UK Intellectual PropertyOffice (IPO) has rejectedSociété des Produits Nestlé SA’sapplication for the registrationof a three-dimensional (3D)shape mark representingits Kit Kat chocolate waferproduct, except in relationto cakes and pastries (CaseO-237-13).
In New Yorker SHK Jeans vOffice for Harmonisation in theInternal Market (OHIM) (CaseC-621/11 P), the European Courtof Justice (ECJ) has held thatOHIM was entitled to take intoaccount additional evidence ofuse filed by the opponent afterthe original deadline for filingproof of use had expired.
Following the release of astudy that considers the risk ofcollision between applied-fornew generic top-level domain(gTLD) strings and non-delegatedTLDs, the Internet Corporationfor Assigned Names andNumbers (ICANN) has proposeda series of mitigation measures.
The proposed third amendmentsto China’s Trademark Lawhave undergone a secondreading during the thirdsession of the 12th NationalPeople’s Congress StandingCommittee. Although the draftamendments were not madeavailable to the public, detailswere posted on the NationalPeople’s Congress website.
Columns
While Mexico is not bound to introduceopposition proceedings as a result ofaccession to the Madrid System, movesare afoot that should result in substantivereform to the Industrial Property Law bythe end of the year
Interflora is good news, in terms ofAdWord strategy and enforcement, forowners of major reputable brands andparticularly those with a history ofco-branding with other businesses
Group buying sites are soaring inpopularity, but what liabilities do suchsites bear if the products on sale infringetrademark rights?
Rights holders have critical roles to playin establishing an environment that isrespectful of intellectual property, as closepublic-private collaboration is essential
Latin America has experiencedtremendous economic development inthe past decade, bringing about a markedacceleration in trademark-related activitythroughout the region. Choosing the rightlegal partner, however, remains key
