World Trademark Review Issue 09 September/October 2007

The end of an era

The UK trademark examination process will change dramatically next month when relative grounds are no longer considered by the registry
Chris McLeod


Famous marks doctrine does not curry favour with US court

In March this year the US Court of Appeals for the Second Circuit issued a decision which challenges the understanding that the 'famous marks' doctrine is applicable in the United States
Ethan Horwitz and Jill Wasserman

An enduring trademark legacy

The success of E&J Gallo Winery has not only made a family name famous around the world, but has also tested how well a personal commitment to the value of trademarks can translate into a brand strategy
Liz Rutherford-Johnson

OHIM: A work in progress

Earlier this year OHIM published the results of its second user satisfaction survey. The findings show that while progress has been made, there is still some work to be done
John Batho

Guardians of the Community trademark

As the default courts for EU-wide Community trademark and Community design disputes between non-European parties, the courts in Alicante are of crucial importance to mark owners outside the European Union. In the time since their creation in 2004, they have been busy clarifying their level of jurisdiction and their functions
Jonathan Hinkson

Loved but underused

Community designs are powerful and flexible rights that should be part of most IP owners’ portfolio. However, while technically a success, they have not attracted as much interest as could have been expected
Véronique Musson

Laying the ground for an IP hub

Singapore is making progress towards becoming a regional IP hub by amending its already mature trademark law
Kevin Wong and Angeline Raj



Brands from the frontline
Devising a corporate trademark philosophy

Ensuring that all employees understand the importance of trademarks to the business should be part of every company's brand protection strategy
Evie Kyriakides

Trademark management
Product quality and trademark licensing in China

A growing number of foreign trademark owners are seeking trademark licensing opportunities in China to exploit the commercial value of their marks. However, they often overlook the issue of quality control
Jinjie Chen

The view online
The keyword advertising dilemma: an attempt at state regulation

As the federal courts are split over the legality of keyword advertising, one state has passed a law banning such practice. But the statute’s constitutionality and enforceability are questionable
James L Bikoff

Counterfeiting perspectives
The case for a united approach to enforcement

The European approach to enforcing rights against counterfeiters has so far been characterized by a lack of cohesion, with national courts too quick to apply local rules. Greater use of the option to refer matters of EU law to the European Court of Justice will help to develop unified tactics in the fight against counterfeiting
Henning Hartwig

Co-published editorialCountry Correspondents

Domain name management

Australia - Baker & McKenzie

The management and regulation of ‘.au’ domain names are subject to a number of peculiarities that are commonly misunderstood. Among other things, there are strict eligibility requirements, prohibitions on sale and limitations on transfer to take into consideration. Key differences between the policy governing ‘.au’ domain name disputes and that used for generic top-level domains also exist

Netherlands - SteinhauserHeeziusRijsdijk Advocaten

In order to ensure efficient domain name management in the jurisdictions making up Benelux, mark owners must take into account both general rules and the specifics of local case law

United Kingdom - Clifford Chance LLP
European Union

With over 2.4 million ‘.eu’ domain names registered since its launch a year ago, the ‘.eu’ domain is certainly proving popular. Despite early teething problems the sunrise periods gave rights holders the opportunity to register their key domain names. The alternative dispute resolution procedure established provides a further mechanism through which rights holders can enforce their IP rights

Germany - Jonas Rechtsanwaltsgesellschaft mbH

The management of domain names in Germany, as in all other jurisdictions, requires careful planning and a detailed knowledge of the peculiarities of the domain name registration and protection systems. Notably, alternative dispute resolution does not exist in Germany; however, the use of court procedures can quickly stop cybersquatters in their tracks

Mexico - Uhthoff Gomez Vega & Uhthoff SC

Registration of domain names in the ‘.mx’ country-code top-level domain is rapidly gaining in popularity. Parties looking to register domain names or defend their interests in Mexico need to look carefully at the IP assets they hold and be aware of additional types of protection that may be available

United States - Morgan Lewis

With the emergence of new practices such as domain name tasting, brand owners must reinforce their programmes for procuring, administering and monitoring domain name registrations. Such measures are an essential counterpart of any thorough brand protection regime

Co-published editorialRoundtable

Different but the same

With a large, relatively wealthy population, the United Kingdom is a European jurisdiction that no trademark owner can afford to ignore


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Issue 74