World Trademark Review 38
Features
Inside Track: a senior management perspective on IP
At some organisations, securing senior management buy-in can be a struggle for trademark teams. At
others – particularly at brand-led businesses –
management places trademarks at the centre of its
business strategy. Such is the case at LACOSTE SA, as
board chairman Michel Lacoste reveals
Getting the message through – how trademark owners can persuade legislators to listen
New laws are drafted and crucial decisions made far away from the offices of trademark practitioners. So how can counsel ensure that their voices are heard in the corridors of power?
Industry Awards 2012
On May 8 2012, WTR announced the winners of its sixth Industry Awards at an exclusive ceremony in Washington DC’s National Museum of Women in the Arts. The awards are designed to recognise the vital work carried out by in-house trademark counsel, and identify the teams and individuals that are performing their functions to the highest
possible standards. Over the following pages we speak to the winners and explain why they were judged to be leading examples of industry best practice.
INTA-related – the brands and trademarks nexus
WTR looks back on the key learnings from this year’s
International Trademark Association annual meeting,
held in Washington DC
Let’s get engaged
It is difficult to know how best to reach out to the public on counterfeiting: apathy and scepticism seem to be growing, yet educational initiatives can appear a luxury in the current economic climate. But consumer engagement can be critical to an effective anticounterfeiting strategy
Ready to object? Protecting your trademark in the new gTLD regime
With the gTLD application process back on track after a
system glitch, and the applied for strings now known, counsel need to ensure that they are familiar with the immediate trademark protection mechanisms available to protect brands
Trademark Toolkit: Creating and implementing an effective trademark policy
An internal trademark policy provides an ideal opportunity to create a wider business understanding of IP issues, allowing for more effective dialogues with internal stakeholders. For those organisations seeking to construct a policy, it is important that the opportunity is not wasted
Internal branding and the sustainable company
WTR has previously investigated the issue of trademark greenwashing. For those companies aiming to truly incorporate sustainability into their corporate brand identity, an important aspect to consider is internal branding – an activity that requires a multistakeholder approach
Applicants beware: the rising menace of trademark solicitations and scams
While many trademark counsel are alive to the danger
of trademark filing scams, increasing numbers of companies are paying invoices in the mistaken belief that such payment is necessary to maintain their trademark applications or registrations. While industry is moving to address this problem, it is important to ensure that all internal stakeholders are able to identify misleading solicitations
Border seizure in the European Union – a universal legal tool
Under the EU customs regime, rights holders can have counterfeit goods confiscated at the borders. However, it is questionable whether the regime adequately considers the rights of alleged infringers
News
ICANN finally reveals new gTLD applications
Almost one and a half months later than originally planned, the Internet Corporation for Assigned Names and Numbers (ICANN) has revealed the first batch of applications for new generic toplevel domains (gTLDs) at a press conference held in London.
Newsflash
As WTR went to press, the Court of Justice of the European Union (ECJ) issued its decision in Chartered Institute of Patent Attorneys v Registrar of Trademarks (Case C-307/10), often referred to as the IP TRANSLATOR case.
ECJ delivers blow to Lindt in ‘chocolate rabbit’ decision
In Chocoladefabriken Lindt & Sprüngli AG v Office for
Harmonisation in the Internal Market (OHIM) (Case C-98/11 P, May 24 2012), the Court of Justice of the European Union (ECJ) has put an end to Lindt’s hopes of
securing a Community trademark (CTM) for its gold foilwrapped chocolate rabbit with a red ribbon and small bell.
“Welcome return to common sense” in ECJ’s F1 judgment
In Formula One Licensing BV v OHIM (Case C-196/11 P, May 24 2012), the ECJ set aside a decision of the General Court, holding that the latter did not have jurisdiction to question the validity of a national trademark used to oppose the registration of a CTM.
Global view
For regular jurisdictional updates, see WTR Daily. Delivered straight to your inbox, WTR’s regular email news service provides legal updates, industry analysis and the editor’s pick of the best trademark content from around the globe
Columns
Papa’s got a brand-new bag: Papa’s got a brand-new bag: ITC victory
A recent decision of the US International Trade Commission highlights its potential role in brand owner enforcement strategies
When trademark law and human rights collide
The ruling by Kenya's High Court that the country’s Anti-counterfeiting Act is unconstitutional because it threatens
access to generic drugs could have major implications for pharmaceutical brand owners
Greece’s new trademarks law: was it worth the wait?
While it has seemingly gone unnoticed, and only practice will prove how effective the changes will be, Greece’s new trademark legislation represents a notable step forward
Co-published editorial
Country correspondents
Design and trade dress
Canada - Bereskin & Parr LLP
Obtaining the most comprehensive protection for designs and trade dress in Canada often requires a coordinated strategy that relies on trademark, copyright and design protection
Current legislation in China is generally sufficient to protect trade dress, but improvements are needed to clarify the scope of protection afforded to shapes and appearance
The importance of trade dress has been reinforced by judicial precedents which have made clear that products are purchased not just by reference to brand names, but also to their overall presentation
Not all Italian courts take the same approach towards the lookalike phenomenon or trade dress in general
Mexican legislation does not prohibit the accumulation of rights; thus, a rights holder should seek to protect all elements contained in its trade dress in order to cover as much as possible
While there is currently no statute on trade dress in Poland, there are legal tools available to brand owners to
protect their intellectual property
Although registrations alone cannot guarantee 100% protection against parasitic copying, combining registration with the Unfair Competition Law and the Copyright Law could safeguard a brand owner’s rights
In the absence of specific trade dress legislation, a number of protections are available to protect a product’s visual appearance
Businesses should consider all relevant protection available in the United Kingdom. Although unregistered rights are immediately available and incur no upfront cost, registered rights are more straightforward to establish and enforce
Design patents, trade dress and copyrights each have different requirements, resulting in the need for a multi-faceted approach
