World Trademark Review Issue 12 March/April 2008

Cheers to GIs

Geographical indications are often overlooked as means to protect brands. As the UK government closes a consultation on proposed increased protection for both consumers and the scotch whisky appellation, a reminder of how geographical indications can be used successfully is called for
James Fry and Joanne Flack


Aftershocks of Opel/Autec

In early 2007 the ECJ issued a decision on the use of an automobile manufacturer’s mark by a third party on its toy cars. The decision supposedly clarified what constitutes infringement under Article 5(1)(a). One year on, some are now arguing that the ruling may have unforeseen consequences
Tobias Cohen Jehoram and Maarten Santman

Starbucks not running out of steam just yet

Starbucks suffered a dip in profits last year. Nonetheless, plans for the global colonization of its brand remain in place and the IP department will continue to play a key role in realizing this aim
John Batho

Carnival time for trademark practitioners and owners in Brazil

The Trademark Office is tackling one of the world's worst examination backlogs and practitioners are worrying about the effects that the Madrid Protocol will have on their revenue streams. Yet the Brazilian trademark market still holds promise for all its stakeholders
Véronique Musson

US design protection: before and after the Hague Agreement link

As a link between the United States and the Hague Agreement is likely to become law soon, it is time to take a look at design protection in the United States and the effects that the link is likely to have
Jessica L Rothstein

Yahoo! acquisition: something to cheer about?

Microsoft’s plan to buy Yahoo! raises a number of important branding and trademark considerations in terms of both the minutiae of the deal itself and the implications for the online advertising market
John Batho

The real story behind Second Life

Much has been said in recent months about the potential for trademark abuse on virtual reality website Second Life, but what exactly do brand owners seeking to protect their rights need to know?
David Naylor and Simon Chapman



Brands from the frontline
Protecting colour marks: the inside story

A trademark lawyer at BP gives an insight into how the energy company obtained trademark rights in the colour green and is now protecting it as one of its most valuable brands
Giovanni Visintini

Counterfeiting perspectives
PRO-IP bill sparks controversy

A new anti-counterfeiting bill was introduced in the US Congress in December. However, it is meeting some resistance
Leora Herrmann

The view online
Online contributory liability and keying issues keep US courts busy

A New York federal court is considering the issue of contributory trademark infringement online while another US court revisits the issue of keyword advertising
James L Bikoff

Trademark management
Trademark warming in Africa

Recent developments mean that trademark owners should make plans both to develop their brands’ presence and to protect their rights in (and from) Africa
Darren T Olivier

Co-published editorialCountry Correspondents


Australia - Baker & McKenzie

Mark owners seeking to protect their rights against counterfeiters should follow the money trail. New rules on asset freezing orders in Australia will help them along the way

Netherlands - SteinhauserHeeziusRijsdijk Advocaten

Until relatively recently, the Dutch authorities had a somewhat laissez-faire attitude to counterfeiting. The belief was that rights holders should protect their economic interests themselves. Now, though, attitudes have started to change

China - Kangxin Partners PC

Thorough investigations and careful evidence collection are at the heart of any successful anti-counterfeiting campaign in China. But flexibility is also key

United Kingdom - Clifford Chance LLP
European Union

Seizures by Customs in the European Union increased by 40% between 2005 and 2006 and are continuing to grow. Although legislation has been introduced to tackle counterfeiting across the European Union, far more needs to be done to prevent the initial production and sale of infringing goods

France - Inlex Conseil

A new law enacted on October 29 2007 brings the French IP provisions into line with the EU IP Rights Enforcement Directive. The new provisions, some of which go beyond the directive’s requirements, bring significant changes to IP practice in France

Germany - Jonas Rechtsanwaltsgesellschaft mbH

A comprehensive legal framework and efficient enforcement by the courts mean that protection against counterfeiting is very effective in Germany. However, the onus is on brand owners to protect their rights

India - Anand & Anand

One of the fastest-growing industries in India, the software and IT industry, is also one of the most affected by counterfeiting and piracy

Italy - LES database

Italy enjoys the dubious honour of being at the top of the list of producers and consumers of counterfeit goods in Europe. However, recent efforts may change this situation

Mexico - Uhthoff Gomez Vega & Uhthoff SC

Mexico is a large consumer and producer of counterfeits. However, this should not discourage brand owners from devising anti-counterfeiting programmes, as Mexican legislation provides the necessary tools

United States - Knobbe Martens Olson & Bear LLP

Although the United States provides a good legal framework to fight counterfeiting, depending on the legal system alone is often not enough. US brand owners must be diligent in the prevention of the manufacture and distribution of counterfeit products

Co-published editorialRoundtable

The case for Germany

Germany is the biggest and most affluent country in Europe. That makes it a vital market for companies from across the world. However, while Germany is a member of the European Union and should, therefore, follow standard EU trademark practice, there are certain nuances to the way the law is interpreted and enforced that could spell trouble for anyone failing to call upon the expertise of local counsel. And for those used to working in a common law jurisdiction, the fact that Germany is a civil law country brings other factors into play


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Issue 74