World Trademark Review Issue 03

September/October 2006

FIFA’s trademark tactics

The 2006 World Cup saw FIFA’s income from corporate sponsors and licensees rise to unprecedented levels. FIFA took various steps to keep the exclusive IP rights of its sponsors secure, but although these measures were largely successful, many felt that FIFA’s tactics bordered on the draconian
Florian Schwab

Features

Dealing with abusive company name registrations

The public perception of what a business name, domain name and trademark respectively confer on the owner or registrant is becoming increasingly blurred. This has opened fertile ground for infringers. For instance, there is a growing trend in Hong Kong in the incorporation of company names that embody famous marks
Chi Keung Kwong

Finding its feet: 10 years of OHIM practice

Created out of a void, the pan-European system of trademark registrations run by OHIM has exceeded all expectations in the numbers of applications filed as well as in the way it has impacted on trademark owners’ protection strategies in Europe
Véronique Musson

Reflecting on the CTM

One of the founding fathers of the CTM system gives his views on how the system came to be and its first 10 years of existence
Liz Rutherford-Johnson

OHIM and the CTM – the practitioner’s perspective

As the CTM celebrates its 10th anniversary, practitioners believe that it has been a success. However, that does not mean there is not room for improvement
John Batho

Shaping trademark case law for Europe

In the 10 years since the launch of the CTM system, the EU courts and the Boards of Appeal have produced an impressive body of case law covering areas such as registration, use, validity and enforcement
Véronique Musson

OHIM and the CTM – the in-house perspective

To mark the 10th anniversary of the CTM, World Trademark Review spoke to in-house counsel at three companies that are among the highest filers of CTMs to hear their views on OHIM’s performance so far
John Batho

Nestlé’s winning formula for brand management

‘Enormous’ hardly begins to describe the trademark portfolio of the world’s largest food and drink company – and the workload involved in managing it. But when it comes to finding the best solutions to protect these very valuable assets, Nestlé has found that what works best for it is looking for the answers in-house
Véronique Musson

Pacific Brands leaves sub-licences in an ocean of uncertainty

Transferring licences and sub-licences and assigning the associated rights is all part and parcel of the trademark game. However, according to one wellrespected commentator, a decision by an Australian appeal court may have changed the rules
Liz Rutherford-Johnson

News

Columns

Brands from the frontline
Marks in the media

Brand protection in the media industry comes with its own set of challenges. Conducting programme name clearance under time pressure and making guesses as to the likely lifespan of a programme when deciding priorities for trademark protection are two of the problems the in-house media trademark lawyer will encounter
Diane Hamer

Trademark management
The changing face of trademark management

Technical and legal changes to trademark registration allow trademark professionals to move away from the administrative aspects of portfolio management and focus on the role of trademarks in the business. This changing role calls for fully dedicated trademark professionals and a budget to match
Darren T Olivier

The view online
Wikipedia – A valid source for trademark matters?

A legal storm is brewing over the use of Wikipedia, the online encyclopaedia, as a valid source in trademark decisions, as well as general legal matters. While Wikipedia has been cited by numerous US federal court opinions in the last year and in three recent decisions of the USPTO Trademark Trial and Appeal Board, is it acceptable to use a source that is a moving target, changeable by almost anyone at almost any time?
Ron N Dreben

Counterfeiting perspectives
The positive side of fakes

Everyone thinks that counterfeiting and other forms of IP crime are always damaging, right? Well, no actually
Joff Wild

Co-published editorialRoundtable

The Latin perspective

Countries in Latin America are of increasing importance to trademark owners. In this roundtable, practitioners from four of the region’s most important jurisdictions discuss the latest developments

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