World Trademark Review Issue 15

September/October 2008

The inside track – Coca-Cola

The recently appointed European trademark counsel for The Coca-Cola Company talks to World Trademark Review about moving from private practice, tightening budgets and poor customs legislation, among other things

Directory

International directory

Make sure that your firm’s details are always accessible to trademark practitioners and brand owners worldwide.

Features

The O2 Case – a European perspective

The ECJ has issued guidance on comparative advertising following a reference from the Court of Appeal for England and Wales in O2 Holdings Limited v Hutchison 3G UK Limited. The case may have repercussions on national practice across the European Union

Plundering Culture

While the scope of protection to be afforded to indigenous peoples’ rights is still the subject of international debate, brand owners should take note that the efforts to preserve or revive these rights mean that some names or traditional imagery may not be used freely

The Mysterious ACTA

There has been a lot of talk about the Anti-counterfeiting Trade Agreement since news of its existence first broke towards the end of last year. An unusual level of secrecy surrounding the negotiations means that people are not sure exactly what the treaty is about

Escaping the money trap

OHIM has amassed well in excess of €300 million in surplus funds. The problem is, it was never supposed to make any money. A cut in fees was agreed over a year ago, but progress has since been slow. WTR asked a number of interested parties for their opinions on what should be done with the excess funds
John Batho

OHIM: A year of change

This year will be remembered as an important one for OHIM. Examination times are likely to start falling significantly and the promised cut in fees seems to be on the horizon at last. Although justifiably proud of its achievements this year, the management at OHIM is well aware that more needs to be done
John Batho

Keeping it together

OHIM has close ties with the national offices of all member states and new IT tools will usher in even higher levels of cooperation. However, the decision to make national search fees optional and proposed cuts to OHIM’s fees have caused divisions
John Batho

Win some, lose some

Internet host providers and auction platforms increasingly find themselves at the centre of claims for trademark infringement based on sales of counterfeit items on their websites. Two courts – one in France and one in the United States – have recently issued decisions in cases involving eBay, but reached completely different conclusions. In this focus, David S Fleming of Brinks Hofer Gilson & Lione examines the long-awaited decision in the Tiffany Case, while David Taylor of Lovells talks to WTR about the issues raised by the French ruling
David Taylor and David S Fleming

The future of attorneys’ fees awards in US counterfeiting cases

In late 2007 the Ninth Circuit refused to award attorneys’ fees in a counterfeiting case on the basis that the plaintiff had chosen to receive statutory rather than actual damages. This decision departed from precedent and worried brand owners
Rita W Siamas

News

Dutch patent decision shakes up interpretation of ECJ’s Montex

A ruling relating to patents issued in July by a Dutch court has challenged the commonly held belief that the European Court of Justice’s (ECJ) decision in Montex (Case C-281/05, November 9 2006) means that in-transit goods cannot be seized under the EU Customs Regulation (1383/2003)

American Airlines and Google settle US keyword dispute

Google Inc and American Airlines quietly settled their dispute over the search engine’s controversial AdWords programme in July (Case 07cv487 in the US District Court for the Northern District of Texas). The airline had instituted proceedings against Google, claiming that the search engine had infringed its rights by allowing competitors to purchase American Airlines’ trademarks for use as keywords to generate sponsored links

Domain space set to expand

The board of the Internet Corporation for Assigned Names and Numbers, the body responsible for the global coordination of domain names, approved at the end of June a recommendation that will dramatically expand the possibilities for new top-level domains (TLDs) in the generic domain name space

World Cup marks cancelled by OHIM board

In a series of decisions, the Board of Appeal of the Office for Harmonization in the Internal Market has overturned rulings of the Cancellation Division in which the latter had refused to order the cancellation of the Community trademarks (CTMs) GERMANY 2006, WORLD CUP 2006, WM 2006, WORLD CUP GERMANY and WORLD CUP 2006 GERMANY (Cases R1467/2005-1, R1466/2005-1, R1468/2005-1, R1469/2005-1 and R1470/2005-1, June 30 2008)

Columns

Trademark management
A guide to licensing and franchising in Russia

Recent changes to Russia’s IP legislation have reinforced a statutory platform for contractual licensing and franchising in Russia. While the new rules have clarified certain aspects, licensing and franchising remain complex operations in Russia
Eugene A Arievich and Margarita Divina

Counterfeiting perspectives
Dealing with ineffective Canadian laws

The international anti-counterfeiting community regularly cites Canada as having inadequate and ineffective IP rights protection. Prompted in part by this censure and in part by a grass-roots demand for change, Canada is taking steps to improve its IP protection
Lorne M Lipkus and Georgina Starkman Danzig

The view online
Strategic thinking needed in online advertising cases

In internet advertising cases, multiple splits of authority in US courts make it important to think strategically both in litigation and in setting corporate advertising policies
Ian C Ballon

Co-published editorialCountry Correspondents

Publicity and image rights

China - Kangxin Partners PC

Portrait rights in China are not absolute: fair use of a personality’s image is allowed, as long as the person making the unauthorized use exercises care in the manner in which the portrait is displayed

Germany - Jonas Rechtsanwaltsgesellschaft mbH

The Federal Court of Justice has recently introduced a new graduated concept of protection under which the greater the informative value of the image or the social relevance of the incident reported, the more the protection of the personal rights must take second place

India - Anand & Anand

India is yet to recognize the rights of publicity and image as distinct legal rights. However, individuals may rely on an accepted framework of IP and other rights to prevent the unauthorized exploitation of their names and images

Italy - Bugnion SpA

In Italy, publicity and image rights are governed by the Civil Code and the Copyright Law. Consent to use an individual’s image must be obtained, especially where the image is exploited for commercial purposes

Mexico - Olivares & Cia

The new Privacy Law, which came into effect in 2006, enhances the protection of the rights to privacy and publicity under the Federal Civil Code and the Copyright Law

Co-published editorialRoundtable

Avoiding the pitfalls of operating online

Three senior practitioners look at trademark issues affecting brand owners on the Internet

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Issue 67