World Trademark Review Issue 06

March/April 2007

TTAB rules changes still on the horizon

Those seeking to enforce rights in trademarks and service marks in the United States often choose the Trademark Trial and Appeal Board. It is a forum with fewer procedural requirements and less rigorous rules than federal courts, which means that, at least initially, costs are nowhere near as high as those incurred during federal litigation. However, some changes to the Rules of Practice proposed by the board may change the dynamics of such proceedings
Thomas W Brooke

Features

IP infringement penalties ruling will have sweeping effect

Late last year, the ECJ issued its first judgment regarding the penalties for IP infringement. The ruling outlines the conditions for the imposition of prohibitive injunctions against unauthorized use of Community trademarks, and both the outcome and the reasoning of the court will be of interest to rights holders across the European Union
Henrik Wistam

Learning to surf the licensing wave

Each company has a different trademark and brand story to tell. For the Extreme Group, which is just reaching its teens, the story is all about building through intensive licensing
Véronique Musson

Dealing with the German boom

The German Patent and Trademark Office faces a number of challenges, including a surge in applications and the need to tackle backlogs. But senior staff are confident they are up to the job
Véronique Musson

Europe’s trademark powerhouse bounces back

Germany is an important player in the global economy and the home of a significant number of high-profile brands, but in recent years the market for trademark legal services has slowed down. Now, however, it looks like things could be improving
John Batho

More than meets the iPhone

The dispute over the name iPhone has attracted a lot of attention because of the fame of the parties involved. Besides offering the entertainment of seeing two giants locked in combat, the dispute provides some worthwhile trademark lessons
Martin Schwimmer

The European name game

The blurring of traditional distinctions between trademark attorneys and lawyers in Europe means finding the right person for the job can be a confusing task. The situation is not helped by the nomenclature that different professionals use
Liz Rutherford-Johnson

Keeping your house in order

Brand owners tend to focus their fight against counterfeiting on external actions. While this is crucial, they should also make sure they take all necessary measures internally to avoid giving a helping hand to potential infringers
Adrian Punderson

The road to victory in Shanghai

The decision by the Higher People’s Court of Shanghai to uphold claims brought by Starbucks against an infringer for trademark infringement and unfair competition has thrown light on the long-standing conflict between trademark rights and proprietary rights in enterprise names in China. The decision also demonstrates the Chinese authorities’ determination to step up their efforts in affording greater protection to well-known foreign brands
Loke-Khoon Tan and Andrew Sim

Stopping telemarketers stealing your customers

The UK High Court has shed some much-needed light on the slightly dubious methods employed by telemarketers that seek to piggy-back on another brand owner's success by blurring the distinction between themselves and the brand owner. The ruling provides guidance on the extent to which such traders are expected to go in distinguishing their products and services from those of other traders to ensure they stay on the right side of the law
Joel Smith and Sarah Burke

News

Columns

Brands from the frontline
Brands online: the importance of a domain name policy

As the Internet plays an increasingly important role for businesses, it is crucial that these develop a domain name policy as part of their brand policy. And that policy must provide not only registration rules, but also management rules
Annemieke De Koster

Trademark management
The whole truth and nothing but the truth

The consequences of an applicant or registrant making a material misrepresentation of fact before the US Patent and Trademark Office that it knew or should have known was false or misleading can be severe. If proven, the application or registration will be deemed void in its entirety. Thus, a clear understanding of both how to avoid a claim of fraud and how to deal with potentially problematic applications or registrations is imperative for any trademark professional
Susan M Natland

The view online
Keying under French law

Some internet business models, such as the use of trademarks in keyword advertising, collide with the law of certain jurisdictions. This is the case in France, where the courts have issued numerous decisions against the providers of keying services
David Taylor

Counterfeiting perspectives
Taking on Joe Public

Until consumers are convinced that buying counterfeit goods is wrong, other initiatives designed to halt the trade in fakes are bound to fail
Joff Wild

Co-published editorialCountry Correspondents

Enforcement

Australia - Davies Collison Cave

Many countries have similar systems for the registration and enforcement of trademarks. However, there will inevitably be differences, often borne out of the different jurisprudential bases on which these systems are based. This article looks at trademark enforcement in Australia and highlights some aspects of the Australian legislation which differ from the US system. It also examines the main border protection methods available in Australia to trademark owners

Co-published editorialRoundtable

Making sense of the Internet

A panel of experts discuss some of the problems that trademark owners now face online and look ahead to what may develop over the coming years

Co-published editorialIndustry insight

Industry Insight
A better path to IP management: the top 10 trademark tips

Navigating the world of intellectual property can be difficult and timeconsuming. Improper trademark management can distract from your core business, result in wasted resources and put valuable trademarks at risk. Corporations and outside counsel need experienced guidance and a clearly defined roadmap.

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Issue 67