World Trademark Review Issue 18 April/May 2009
Brand owners and producers in the Arab world are
calling for better protection of geographical
indications. WTR investigates what is being done
In relation to online infringement, some
jurisdictions may appear friendlier to mark
owners than others. But before assessing the
facts of a case, the relevant court will need
to accept jurisdiction. Case law on this issue
is developing in Europe
Emmanuel Baud, Larry Cohen, Nathalie Marchand and Julia Wahrendorf
While Chinese law does not specifically recognize
dilution, new analysis of 100 of the most recent cases
shows that some courts have been applying dilution
principles. However, the Supreme Court’s latest
guidelines indicate that China is a very long way from
adopting the US approach to dilution
The global slowdown is starting to bite in the larger
trademark services markets of the Nordic region.
However, some firms feel that strong cross-border
expertise will give them an edge in an increasingly
In Autumn 2008 a US district court ordered the
forfeiture of marks owned by a gang known as the
Mongols on the grounds that the gang engaged in illegal
activities. While the forfeiture of property is provided
for under various US statutes, this case raises more than
its fair share of legal and constitutional issues
The Singapore Treaty signed nearly two years ago
mainly tackles procedural changes. However, its
coming into force in March acts as a reminder that
streamlined and harmonized trademark application
procedures are far from being a reality across the world
Sheena Jacob and Anne-Louise McMenemy
Last year the Israeli Supreme Court issued two
decisions that seemed to reverse the Trademark
Office’s restrictive practice regarding the registration
of three-dimensional marks. However, the
interpretation of these rulings by the Trademark
Office indicates that the issue is far from settled
Neil J Wilkof and Gilad Shay
Five years since EU member states agreed to
harmonize IP enforcement, WTR reassesses the
project in a major survey of corporate counsel
and private practitioners
As IP budgets are likely to be cut along
with the budgets of most other in-house
departments, it is time to review some key
elements to ensure that the trademark
department remains on top form
Strengthening enforcement, building
capacity and raising awareness are all part
of the World Customs Organization’s plan
to curb counterfeiting and piracy. The
programme for 2009 includes the creation
of extra tools to enhance operations and
promote the exchange of information
As initial interest confusion on the
Internet continues to divide the courts,
our columnists suggest that they focus
less on initial confusion and instead apply
the traditional confusion test
Sheldon Burshtein and Antonio Turco
Co-published editorialCountry Correspondents
Trademark prosecution and registration strategies
Knowledge of the law is one thing, but more needs to be considered when thinking of adopting a new trademark in Benelux. In this article some strategic considerations are discussed.
Trademark prosecution in Brazil presents specific challenges – the most obvious and difficult of which is the substantial backlog at the Trademark Office.
Trademark prosecution in Canada presents many unique features, including some disparities with the systems in place in its neighbour – the United States.
Brand owners seeking to register their marks in China need to be aware of the delays at the Trademark Office, the quirks of the classification system and the pitfalls of transliterating names into Chinese characters.
United Kingdom - Clifford Chance LLP
A Community trademark offers the considerable advantage of protection in the European Union’s 27 member states. However, the Community system still presents a number of drawbacks that may lead mark owners to prefer other registration systems.
Germany is Europe’s largest economy, so careful consideration should be given as to how best to protect trademarks in this key jurisdiction.
Marks that are similar and were filed close together in time are normally examined by the registrar of trademarks who will render a decision based, among other things, on the good faith of the applicants and the extent of use of the marks at issue.
Trademark prosecution in Italy differs strikingly from most other systems. The process will significantly improve once the opposition system, set out in the Trademark Law of 1999, is finally implemented.
Protecting trademark rights in Mexico poses a number of challenges. The law sets out strict requirements on the types of signs that are capable of registration and the procedures differ in many ways from those in place in other jurisdictions.
Despite not being part of the European Union, Norway’s registration procedures are, for the most part, aligned with those in place across Europe. However, there are some differences so rights holders must plan their filing strategies with care.
A lack of objective guidance from the Portuguese Trademark Office and conflicting decisions from the courts with regard to the classification of goods and services create difficulties for IP rights owners seeking to protect their rights in Portugal.
While Romania has a longstanding tradition of protecting trademark rights, issues relating to its accession to the European Union make the development of registration strategies tricky.
Russian legislation for trademark protection has certain peculiarities that need to be taken into account when planning to enter the Russian market and choosing a strategy for trademark protection.
Selecting the goods and/or services to be applied for in a trademark application is a more complex task than meets the eye. This is particularly true in Spain where the trademark office's practice differs from that of other EU IP offices.
While trademarks are protected under both common law and federal law in the United States, obtaining a trademark registration offers unparallelled advantages. But brand owners should beware of the quirks of the US registration system.
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