World Trademark Review Issue 05

January/February 2007

Counterfeiters hit hard

On August 25 2006 a US district court sentenced two Chinese nationals to 97 months and 87 months respectively in federal prison – a rare instance in which individuals convicted of trademark counterfeiting have been sentenced to significant jail time. Counsel for the plaintiffs tells the story of how an ambitious and complex operation had a successful outcome for the brand owners
Michael Holihan

Features

Trademark law gets Brazilian treatment

The landscape of trademark practice in Brazil is changing rapidly, with the national IP office constantly adopting measures to try and improve trademark prosecution – often with mixed results – and various state and federal bodies moving up a few gears in the fight against counterfeiting
Rodrigo Borges Carneiro

The changing face of CTM litigation

An ECJ decision issued in July 2006 has brought an end to forum shopping in cross-border patent litigation in Europe. There could be major consequences for CTM owners too
Matthias Koch and Kathrin Samwer

Building a strategy for shape mark protection

The LEGO Group has become the leading producer of construction toys worldwide thanks to its famous rectangular plastic brick. But protecting the shape of the toy is proving tricky
Veronique Musson

Why Mexico matters

Mexico has a developing market for legal services in relation to trademarks, which has doubled over the past 10 years. Filings from foreign mark owners have been the mainstay of business for many of the big players, but the likely ratification of the Madrid Protocol and other changes may see a change of emphasis
John Batho

Keeping up with the neighbours

Mexico is a big country so it is little surprise that it has a national IP office to match. With four regional offices and an unusually broad remit, the Mexican Institute of Industrial Property is leading the way in protecting and promoting the country’s trademarks
Liz Rutherford-Johnson

Securitization moves up the agenda

Two major US securitization transactions involving sizeable trademark royalty components may finally provide the impetus for the lagging IP securitization market to take off
Edward A Madden and Siraprah Rungpry

A Russian revolution

Although IP laws were among the first statutes to be adopted after the disintegration of the Soviet Union, they did not work overnight. The local economy needed to grow first and people needed to get used to a new reality. But the perception remains that the current situation still reflects the early days of the new regime, even though significant progress has been made in the field of IP protection
Vladimir I Biriulin

Columns

Brands from the frontline

The tendency to use descriptive terms to designate new products is something all in-house counsel must work against, but the problem is particularly acute in the food industry, where marketeers justify such use by saying that consumers want to know where their food comes from
Tove Graulund

Trademark management
Playing with the oddities of the EU system

National trademarks within the European Union supposedly offer the same level of protection as the same sign registered as a Community trademark, albeit for a limited territory. But some oddities in the system mean that, in the case of Benelux, a national registration may offer more possibilities than a Community one
Pieter de Ruijter and Kasper Radstake

The view online
Keying in on potential liability

The widespread practice of ‘keying’ (ie, selling keywords to advertisers) raises trademark liability issues that remain unresolved in most countries
Sheldon Burshtein

Counterfeiting perspectives
Missing the point

As IP crime moves up the political agenda, no one seems to be willing to discuss the real reason why activities such as counterfeiting are so attractive
Joff Wild

Co-published editorialRoundtable

The truth about trademarks in China

Probably no country in the world has had its trademark regime more heavily scrutinized than China. Even so, it can be hard to separate fact from fiction. In this roundtable, four experts give it a go

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