World Trademark Review 19
Features
Inside track – INTA/Unilever
Ahead of INTA’s annual meeting in Seattle from May
16 to May 20, the association’s president for 2009
shares his thoughts on, among other things, the effect
the economic downturn will have on trademarks and
the planned expansion of the generic top-level
domain space
Industry Awards 2009
The WTR Industry Awards 2009, which will
be presented at a ceremony in Seattle timed
to coincide with the 131st INTA annual
meeting, honour leading trademark teams
across a range of industry sectors. WTR
speaks to some of the nominees
2008 Case Law Review
Asia-Pacific
WAHAHA remains in Chinese hands
The dispute over the WAHAHA mark between French
food giant Danone and a Chinese company was in the
headlines throughout 2007, but eventually came to a
head in 2008, when a Chinese court effectively put an
end to the dispute
2008 Case Law Review
Europe, Middle East and Africa
Dilution landscape in Europe altered by Intel
The Intel decision issued by the ECJ at the end
of 2008 puts a limit on the protection of
superbrands against the use of similar marks
on unrelated products or services. Some argue
that this may not be such a bad thing
2008 Case Law Review
Latin America
Brazil court holds shopping centre administrator liable for counterfeiting
In early 2008 the São Paulo State Court of Appeals
issued the first decision in Brazil extending the
principle of landlord, or in this case administrator,
liability to counterfeiting cases
2008 Case Law Review
North America
Foreign fame is irrelevant in the United States
A decision of the Second Circuit issued in early
2008 seems to confirm that the famous mark
doctrine does not apply in the United States – to
the dismay of many non-US brand owners
Design lessons
Although registered Community design rights were
introduced over six years ago, many important
issues remain unresolved. However, an analysis of
the 400 decisions issued by OHIM’s Invalidity
Division provides some useful guidelines
Preparing for the storm
WTR’s exclusive Global Trademark Survey is a
groundbreaking attempt to calibrate the true
impact of the financial crisis on trademark
professionals worldwide. The results serve as a
warning that today’s challenging market looks
set to become even tougher
Canada still at the crossroads
In the three years since WTR’s last Canada focus, a
number of significant changes have been made to
trademark law and practice. However, some argue
that the rate of progress in key areas is far too slow
India’s enforcement crisis
Bordering on breakdown
Halting the flow of counterfeits into India was never
going to be easy. Two years after the introduction of
new regulations to combat the problem, the
government has a new headache: mark owners who
say the regime is failing
India’s enforcement crisis
New bill is huge setback to criminal enforcement
Despite fierce criticism from IP rights owners, a new
bill, which is set to come into force in the near future,
will significantly water down India's criminal
enforcement system
New case law reopens parallel-import debate in Russia
The Russian legal system’s treatment of parallel
imports continues to have a major impact on some
Russian industries, particularly the automotive sector.
This article looks at the latest case law on the matter
Turning to franchising in troubled times
While all business models are likely to suffer in
times of recession, the franchising model is predicted
to fare better than most in terms of growth. Other
immediate benefits make it an option brand owners
should consider
The essential guide to taking on counterfeiters
Brand owners need to be ready to enforce their rights
anywhere in the world through all available means,
including alternatives to trademark remedies. Using
a fictional narrative, tracing distribution of
counterfeits from China to the United States and
Europe, via Dubai, IP experts provide tips on how to
tackle the problem in each jurisdiction
News
Chinese Supreme Court clarifies National IP Strategy
China’s Supreme People’s Court
has issued a set of guidelines
with which to interpret the
country’s notoriously complex
National IP Strategy.
Taiwan court awards record damages
A specialist IP court has handed
luxury goods manufacturer
Hermès International the
highest amount of damages
ever awarded in a trademark
infringement case in Taiwan.
Landmark US keyword case back on track
A US appeals court has dealt a
blow to Google’s controversial
AdWords system by overturning
an earlier dismissal of a
trademark infringement lawsuit
brought against the search engine
by computer breakdown support
company Rescuecom Corp.
CTM fees slashed – at last
The fees for registering a
Community trademark (CTM)
were reduced on May 1.
News in brief
Columns
Trademark management
TTAB provides further guidance on fraud
The US Patent and Trademark Office’s
clamp down on fraud continues to make
waves. New guidance from the Trademark
Trial and Appeal Board will come as some
comfort to brand owners
Counterfeiting perspectives
Secrecy and controversy
As the content of the Anti-counterfeiting
Trade Agreement continues to be known
mainly through leaked documents,
disagreement is mounting over the lack of
transparency and the value of releasing the
current draft text to assuage public mistrust
The view online
New gTLDs delayed as rights protection moves to centre stage
In reaction to brand owners’ concerns
about the consequences of opening the
Internet to new gTLDs, ICANN has delayed
the launch date and created a team
charged with improving trademark
protection mechanisms
Co-published editorial
Country correspondents
Trademark enforcement
Benelux - Arnold + Siedsma
Trademark owners have several means of
enforcing their rights in Benelux. In
addition, the scope and effectiveness of
enforcement actions have increased since
the implementation of the IP Rights
Enforcement Directive.
New enforcement tools in Brazil are
encouraging trademark owners to litigate
to protect their rights and claim monetary
compensation for infringement
Trademark rights can be enforced in
Canada on the basis of both registered
and unregistered rights, under the federal
statute and the common law tort of
passing off. Remedies include
interlocutory injunctive relief, but
proving irreparable harm often presents
a tremendous challenge.
The issue of how best to protect trademark
rights in China is one faced by many
multinational companies. This article aims
to provide some tips on successful
enforcement in China.
Mark owners seeking a preliminary injunction must file their request with a local bailiff’s court while full infringement proceedings should be filed with the Maritime and Commercial Court – a specialized court.
EU legislation provides a number of means by which IP rights may be enforced. In addition, various proposals and initiatives are pending in relation to criminal sanctions and the fight against counterfeiting and piracy.
Germany’s long tradition of trademark
right enforcement ensures that brand
owners are well protected. However, the
recent implementation of the EU Unfair
Commercial Practices Directive and the IP
Rights Enforcement Directive introduced
some small but noteworthy changes
The enforcement of IP rights in India
remains inconsistent. While the Indian
judiciary regularly displays remarkable
flexibility with regard to protection, the
enforcement of IP laws by law enforcement
agencies leaves much to be desired
Enforcing trademark rights in Israel can be done through the usual channels of the courts, the police and Customs. Filing petitions before the registrar of trademarks, particularly in cases of conflicting applications, should also be considered.
Italian statutory law provides all the tools
necessary for the effective enforcement of
trademark rights. This is further
enhanced by the existence of specialized
IP sections within the courts. However,
some peculiarities of the Italian system
mean that the courts are swamped by
cases challenging the validity of
registered trademarks.
In Mexico trademark rights are enforced
mainly through the Trademark Office. The
enforcement of famous and notorious
marks is governed by specific rules.
Trademark owners seeking to enforce
their rights in Norway should typically
start civil proceedings. However, mark
owners should also consider applying for
customs surveillance and should make
use of alternative resolution bodies for
solving unfair competition and domain
name disputes
The implementation of the IP Rights
Enforcement Directive in Portugal
represented a turning point in the country’s
approach to enforcement. However, one year
on, many questions remain unanswered
The debate surrounding the conflict between trademarks and trade names is not new in Romania. However, case law is developing, with certain courts finding that a trade name which infringes an earlier registered mark must be amended
Determining which court has jurisdiction
over a particular dispute is crucial for IP
rights owners. Russian law provides a
number of criteria to answer this question,
but uncertainty remains as to certain kinds
of IP cases
Before the entry into force of the Trademarks
Act in 2001, trademark owners struggled to
enforce their rights before the courts. Further
amendments were introduced by Act
19/2006, which implemented the IP Rights
Enforcement Directive.
When it comes to enforcing their rights in
the United States, mark owners can
choose between a vast array of tools,
including arbitration, litigation and anti-counterfeiting actions.
