World Trademark Review Issue 13

May/June 2008

Shaken and stirred: the adventures of a Soviet vodka brand

The fate of the STOLICHNAYA brand since the collapse of the Soviet Union has been eventful, to say the least, with the fight over rights to the mark extending well beyond the borders of the Russian Federation. A close look at the dispute still raging in Australia provides an insight into the complexity of the issues involved
Julian Gyngell and Pavel Arievich

Focus

Italian market ready to face the opposition

Bad reputations are hard to shake. Many still believe that Italy has ineffective enforcement and trademark registration systems, but the former is no longer true and the latter is set to change too.

Features

Making the most of BVI corporate vehicles

International brand owners looking to invest in new markets and needing effective corporate set-ups to manage their trademark portfolios should consider the British Virgin Islands
Jamal Smith

Fighting the shadows

In a case involving US brewer Anheuser-Busch Inc, the Hong Kong High Court issued in January 2007 an important decision in relation to the registration of shadow company names that incorporate famous trademarks
Gabriela Kennedy and Christine Yiu

Is time up for free riding in Europe?

In October 2007 the Court of Appeal of England and Wales referred questions on central issues in EU trademark law to the European Court of Justice (ECJ) in the case of L’Oréal SA v Bellure NV ([2007] EWCA Civ 968)
Peter O'Byrne

Cloe gets her day in court

In Mexico, the courts and the National Institute of Intellectual Property (IMPI) are locked in a power struggle over the registrability of three-dimensional marks. A typical example was the case of In re MGA Entertainment Inc (Case 32271/05-17-05-6 (April 3 2007)), in which the Federal Court for Fiscal and Administrative Justice reversed an IMPI decision that refused registration of the three-dimensional shape of a doll
Roberto Arochi

US court still chews on dilution law

The case of Louis Vuitton Malletier SA v Haute Diggity Dog LLC (Case 06- 2267, November 13 2007) highlighted that the reform to the law of dilution brought in by the Trademark Dilution Revision Act in 2006 may not be the panacea that famous mark owners believed it would be
Rochelle D Alpert

Not to be missed

A number of interesting US decisions issued in 2007 did not receive the coverage they deserved. They include the following
Leigh Ann Lindquist

Italian market ready to face the opposition

Bad reputations are hard to shake. Many still believe that Italy has ineffective enforcement and trademark registration systems, but the former is no longer true and the latter is set to change too
Véronique Musson

Nobody does it like Sara Lee

The sheer size of Sara Lee’s portfolio means that its trademark department tackles almost every aspect of trademark protection and enforcement. Other rights holders can learn much from its approach to copycat products and counterfeiting
John Batho

Keeping Olympic-related rights on track

Since the announcement in 2001 that Beijing would host the 29th Olympic Games, the Chinese authorities have made significant improvements to the IP protection regime. With the games now just around the corner, the authorities and rights holders must start putting their final strategies in place
Catherine Sun

Branding in China: avoiding a false start

Western companies have been knocking at China’s door for three decades now, all trying to entice the country’s massive purchasing power to their products. Two questions continue to nag at these companies as they consider the Chinese market
Burt Alper

Medal-winning protection in China

When it comes to the most effective ways of dealing with counterfeiting in China, brand owners should look no further than the tried and tested methods adopted by their peers – both large and small
Joseph T Simone

Evicting the cybersquatters

By all indications, 2007 was the worst year ever for cybersquatting, but while the popularity of ‘tasting’ and ‘kiting’ creates new challenges for brand owners, IP counsel at Time Warner and Dell are leading the way in fighting back
Darren T Olivier

A solution to the EU jurisdiction conundrum?

A recent Austrian court ruling may resolve a troubling jurisdictional issue that has perplexed commentators and CTM owners alike, helping the latter to enforce their rights against infringements in the European Union by several defendants located both inside and outside the European Union
Hans Georg Zeiner

Landlord liability and the city

New York City mayor Michael Bloomberg's administration has begun an anti-counterfeiting initiative based upon the legal theory of landlord liability. Many applaud the approach; however, others question whether the initiative merely pushes the counterfeit trade to new locations
G Roxanne Elings

News

Columns

Brands from the frontline
Famous and well-known marks: the challenges of protection

The owners of ‘well-known’ or ‘famous’ marks can benefit from cross-border protection, but far more needs to be done to harmonize the international principles behind these doctrines
Frederick Mostert
Richemont
and Silvia Beltrametti

Trademark management
Maintaining brand integrity in the marketplace

Vigilance on the part of trademark owners is vital to ensuring that a trademark’s goodwill is not exploited or damaged. This column explores the ways in which brand owners can stop unlawful actions and protect brand integrity
Jeffrey Van Hoosear and Jonathan A Hyman

Counterfeiting perspectives
Using money-laundering legislation to combat counterfeiting

Rights owners are constantly looking for new ways to fight the rising trade in fake goods. Recently, the UK authorities have been using the anti-money laundering legislation in order to tackle counterfeiting
Stuart Adams

The view online
Food for thought for domain name tasters

Domain name tasting is the practice whereby domain names are tested over a five-day grace period to see whether they attract a sufficient amount of traffic in order to be profitable. The grace period has had some unexpected, undesirable consequences that ICANN is seeking to tackle
David Taylor

Co-published editorialCountry Correspondents

Pharmaceutical trademarks

Australia - Baker & McKenzie

The sale of pharmaceutical products online is an increasing problem. Various Australian statutes may help in controlling such trade

China - Kangxin Partners PC

China, the most populous country in the world, has a median age that continues to rise. If it can maintain its strong economic growth, building on the success of the past decade, the long-term prospects for pharmaceutical companies in China will be very promising

United Kingdom - Clifford Chance LLP
European Union

With public health and safety issues arising from pharmaceuticals hitting the headlines daily, it is hardly surprising that these concerns have permeated the assessment of whether a new pharmaceutical trademark will cause confusion. EU pharmaceutical trademarks undergo two separate assessments on this front

France - Inlex Conseil

The health industry has always been a sensitive sector, including in relation to trademarks. The current practice for the assessment of pharmaceutical trademarks is the result of a long evolution of French case law

Germany - Jonas Rechtsanwaltsgesellschaft mbH

Unlike marks in most other business fields, pharmaceutical trademarks are affected by regulatory law. In Germany, this influence accompanies the trademark throughout its existence. The owners of pharmaceutical trademarks therefore face a number of specific questions – not only when registering a trademark, but also in connection with maintaining and defending it

India - Anand & Anand

Pharmaceutical trademarks have been the subject of much debate, discussion and case law in India. This article runs through some of the key decisions

Italy - Bugnion SpA

The Italian courts have issued a number of rulings on pharmaceutical trademarks in recent years. This article looks at a selection of key rulings in this field

Mexico - Olivares & Cia

The registration of pharmaceutical trademarks in Mexico may be problematic as there are no clear-cut examination criteria to assess similarity with prior marks. In addition, the body charged with granting marketing authorization has no obligation to assess new applications against existing trademark registrations

Co-published editorialRoundtable

Best practice in devising a litigation strategy

Infringement is, unfortunately, often an unavoidable fact of life for brand owners. Putting in place the most appropriate litigation strategies can help to lessen the pain

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Issue 67