World Trademark Review Issue 16

November/December 2008

Inside track - Microsoft

The head of trademarks at Microsoft speaks to World Trademark Review about the changing definitions underpinning trademark law, dealing with cybersquatters and the need for faster prosecution and more staff, among other things
Veronique Musson

Features

Europe in transit

Various decisions from courts in EU member states have added to the confusion surrounding the legality of seizing and detaining goods in transit at the EU borders
Paul Reeskamp

African strategies and developments

The African continent is the second most populous in the world and thus a significant potential market. Recent developments mean that trademark owners should make plans both to develop their brands’ presence and to protect their rights in Africa
Reinhold Gregorowski, Darren T Olivier and Warren Weertman

Technical difficulties

Technology is racing ahead, but some brand owners and commentators in the United States are worried that practitioners and judges are failing to keep pace
James L Bikoff, David K Heasley, Andrew Kellogg and Linda Riter

Eastern promise

Growing economic strength and a commitment to increased harmonization at the IP level make the ASEAN region an interesting proposition for rights holders. However, there are still many issues to resolve
John Batho

Focus on ASEAN Intellectual Property Association

The ASEAN Intellectual Property Association was established with the aim of providing a means for ASEAN governments to enhance IP cooperation between member countries. It has had many successes to date and is hoping to establish a regional ASEAN trademark registration system, similar to the CTM in the European Union
Kee-Leng Tan

Trademark coexistence agreements – practicalities and pitfalls

Whether signing a coexistence agreement is a good idea and what problems are likely to arise are two of the many aspects that owners of identical marks should consider
Joel Smith and Megan Compton

The candid age

As the US Patent and Trademark Office continues to scrutinize US trademark applications and registrations for fraud, it is becoming clear that practitioners need to re-examine best practices and strategies for the successful protection and enforcement of trademarks in the United States
Jessica L Rothstein

Columns

Trademark management
The lowdown on brand-led corporate transactions

Brands have often been marginalized in favour of tangible assets in the context of corporate transactions. Increasingly, though, companies and practitioners are recognizing the importance of brands.
Mark A Lubbock and Imbali Iserles

Counterfeiting perspectives
Enemies at the gate – challenges for customs protection in China

Customs protection in China is improving year on year. Nonetheless, many challenges remain and IP rights owners must do more to assist the authorities in their endless fight against counterfeiters
Aimin Huo

The view online
New domain names in Argentina: a temptation for cybersquatters?

The ‘.ar’ domain space is expanding. A new ‘.tur.ar’ extension has been launched for selected travel agencies and multilingual domain names will be introduced later this year.
Gustavo Patricio Giay

Co-published editorialCountry Correspondents

Protection of unregistered trademarks and other commercial signs

Netherlands - SteinhauserVandenBrinkHeeziusRijsdijk Advocaten
Benelux

Commercial signs such as trade names, well-known unregistered marks and domain names enjoy some protection under either the Benelux Convention on Intellectual Property or national laws of Benelux member states

Canada - Bereskin & Parr

Unregistered trademarks, trade names and other business signs are protected in Canada under the common law action of passing off. Although this grants unregistered rights extensive protection, passing off carries a heavy burden of proof

China - Kangxin Partners PC

Although China is a civil law country, unregistered trademarks may be protected as prior rights under the Trademark Law and the Anti-unfair Competition Law

Germany - Jonas Rechtsanwaltsgesellschaft mbH

Unregistered trademarks are protectable in Germany as long as they function as trademarks and have acquired a reputation through use. Other commercial signs may also be protected, with the distinctiveness requirements varying depending on the type of right sought

India - Anand & Anand

India allows a rights holder to enforce a mark on the basis of registration, use and reputation. Many remedies are available to the owners of unregistered trademarks

Italy - Bugnion SpA

The Italian legal system grants protection to various unregistered signs, but in practice protection is limited by the heavy burden of proof imposed on the owners of such signs and the somewhat unpredictable application of the law by the courts

Mexico - Olivares & Cia

While trade dress rights may be enforced against third parties under unfair competition provisions, the scope of protection afforded to most unregistered rights is limited to serving as a defence against claims made by a later registrant of a similar or identical mark

Romania - Vilau & Mitel

Unregistered trademarks are protected under Romanian law if they are recognized as well known. Other commercial signs, such as trade names and company logos, enjoy some level of protection under trademark and unfair competition law

United States - King & Spalding LLP

Trademark and commercial name protection in the United States is multifaceted and extends to all trademarks, commercial signs, trade names and trade dress/get-up acquired in good faith whether registered or not.

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Issue 69