World Trademark Review 16
Features
Inside track - Microsoft
The head of trademarks at Microsoft speaks to
World Trademark Review about the changing
definitions underpinning trademark law, dealing
with cybersquatters and the need for faster
prosecution and more staff, among other things
Europe in transit
Various decisions from courts in EU member states have
added to the confusion surrounding the legality of
seizing and detaining goods in transit at the EU borders
African strategies and developments
The African continent is the second most populous in
the world and thus a significant potential market.
Recent developments mean that trademark owners
should make plans both to develop their brands’
presence and to protect their rights in Africa
Technical difficulties
Technology is racing ahead,
but some brand owners and
commentators in the United
States are worried that
practitioners and judges are
failing to keep pace
Eastern promise
Growing economic strength and a commitment
to increased harmonization at the IP level make
the ASEAN region an interesting proposition for
rights holders. However, there are still many
issues to resolve
Focus on ASEAN Intellectual Property Association
The ASEAN Intellectual Property Association was
established with the aim of providing a means for
ASEAN governments to enhance IP cooperation
between member countries. It has had many successes
to date and is hoping to establish a regional ASEAN
trademark registration system, similar to the CTM in
the European Union
Trademark coexistence agreements – practicalities and pitfalls
Whether signing a coexistence agreement is a good
idea and what problems are likely to arise are two of
the many aspects that owners of identical marks
should consider
The candid age
As the US Patent and Trademark Office continues to
scrutinize US trademark applications and registrations
for fraud, it is becoming clear that practitioners need
to re-examine best practices and strategies for the
successful protection and enforcement of trademarks
in the United States
Columns
Trademark management
The lowdown on brand-led corporate transactions
Brands have often been marginalized in
favour of tangible assets in the context of
corporate transactions. Increasingly,
though, companies and practitioners are
recognizing the importance of brands.
Counterfeiting perspectives
Enemies at the gate – challenges for customs protection in China
Customs protection in China is improving
year on year. Nonetheless, many
challenges remain and IP rights owners
must do more to assist the authorities in
their endless fight against counterfeiters
The view online
New domain names in Argentina: a temptation for cybersquatters?
The ‘.ar’ domain space is expanding.
A new ‘.tur.ar’ extension has been
launched for selected travel agencies and
multilingual domain names will be
introduced later this year.
Co-published editorial
Country correspondents
Protection of unregistered trademarks and other commercial signs
Benelux - Arnold + Siedsma
Commercial signs such as trade names,
well-known unregistered marks and
domain names enjoy some protection
under either the Benelux Convention on
Intellectual Property or national laws of
Benelux member states
Unregistered trademarks, trade names and
other business signs are protected in
Canada under the common law action of
passing off. Although this grants
unregistered rights extensive protection,
passing off carries a heavy burden of proof
Although China is a civil law country,
unregistered trademarks may be protected
as prior rights under the Trademark Law
and the Anti-unfair Competition Law
Unregistered trademarks are protectable in
Germany as long as they function as
trademarks and have acquired a reputation
through use. Other commercial signs may
also be protected, with the distinctiveness
requirements varying depending on the
type of right sought
India allows a rights holder to enforce a
mark on the basis of registration, use
and reputation. Many remedies are
available to the owners of unregistered
trademarks
The Italian legal system grants protection
to various unregistered signs, but in
practice protection is limited by the heavy
burden of proof imposed on the owners
of such signs and the somewhat
unpredictable application of the law by
the courts
While trade dress rights may be enforced
against third parties under unfair
competition provisions, the scope of
protection afforded to most unregistered
rights is limited to serving as a defence
against claims made by a later registrant
of a similar or identical mark
Unregistered trademarks are protected
under Romanian law if they are
recognized as well known. Other
commercial signs, such as trade names
and company logos, enjoy some level of
protection under trademark and unfair
competition law
Trademark and commercial name
protection in the United States is
multifaceted and extends to all
trademarks, commercial signs, trade
names and trade dress/get-up acquired in
good faith whether registered or not.
