World Trademark Review Issue 19 June/July 2009
The WTR Industry Awards 2009, which will
be presented at a ceremony in Seattle timed
to coincide with the 131st INTA annual
meeting, honour leading trademark teams
across a range of industry sectors. WTR
speaks to some of the nominees
The dispute over the WAHAHA mark between French
food giant Danone and a Chinese company was in the
headlines throughout 2007, but eventually came to a
head in 2008, when a Chinese court effectively put an
end to the dispute
Howard Tsang and Lilian Shi
The Intel decision issued by the ECJ at the end
of 2008 puts a limit on the protection of
superbrands against the use of similar marks
on unrelated products or services. Some argue
that this may not be such a bad thing
2008 Case Law Review
Brazil court holds shopping centre administrator liable for counterfeiting
In early 2008 the São Paulo State Court of Appeals
issued the first decision in Brazil extending the
principle of landlord, or in this case administrator,
liability to counterfeiting cases
Henry Knox Sherrill
A decision of the Second Circuit issued in early
2008 seems to confirm that the famous mark
doctrine does not apply in the United States – to
the dismay of many non-US brand owners
Although registered Community design rights were
introduced over six years ago, many important
issues remain unresolved. However, an analysis of
the 400 decisions issued by OHIM’s Invalidity
Division provides some useful guidelines
David A Stone
WTR’s exclusive Global Trademark Survey is a
groundbreaking attempt to calibrate the true
impact of the financial crisis on trademark
professionals worldwide. The results serve as a
warning that today’s challenging market looks
set to become even tougher
In the three years since WTR’s last Canada focus, a
number of significant changes have been made to
trademark law and practice. However, some argue
that the rate of progress in key areas is far too slow
Halting the flow of counterfeits into India was never
going to be easy. Two years after the introduction of
new regulations to combat the problem, the
government has a new headache: mark owners who
say the regime is failing
Despite fierce criticism from IP rights owners, a new
bill, which is set to come into force in the near future,
will significantly water down India's criminal
Ranjan Narula and Darshan Ramamurthy
The Russian legal system’s treatment of parallel
imports continues to have a major impact on some
Russian industries, particularly the automotive sector.
This article looks at the latest case law on the matter
While all business models are likely to suffer in
times of recession, the franchising model is predicted
to fare better than most in terms of growth. Other
immediate benefits make it an option brand owners
David W Koch and Darrell M Johnson
Brand owners need to be ready to enforce their rights
anywhere in the world through all available means,
including alternatives to trademark remedies. Using
a fictional narrative, tracing distribution of
counterfeits from China to the United States and
Europe, via Dubai, IP experts provide tips on how to
tackle the problem in each jurisdiction
Omar Obeidat, Laurie Emmer, Hongxu Qin and Eva Den Ouden
China’s Supreme People’s Court has issued a set of guidelines with which to interpret the country’s notoriously complex National IP Strategy.
A specialist IP court has handed luxury goods manufacturer Hermès International the highest amount of damages ever awarded in a trademark infringement case in Taiwan.
A US appeals court has dealt a blow to Google’s controversial AdWords system by overturning an earlier dismissal of a trademark infringement lawsuit brought against the search engine by computer breakdown support company Rescuecom Corp.
The fees for registering a Community trademark (CTM) were reduced on May 1.
The US Patent and Trademark Office’s
clamp down on fraud continues to make
waves. New guidance from the Trademark
Trial and Appeal Board will come as some
comfort to brand owners
Rochelle D Alpert
As the content of the Anti-counterfeiting
Trade Agreement continues to be known
mainly through leaked documents,
disagreement is mounting over the lack of
transparency and the value of releasing the
current draft text to assuage public mistrust
In reaction to brand owners’ concerns
about the consequences of opening the
Internet to new gTLDs, ICANN has delayed
the launch date and created a team
charged with improving trademark
Co-published editorialCountry Correspondents
Trademark owners have several means of enforcing their rights in Benelux. In addition, the scope and effectiveness of enforcement actions have increased since the implementation of the IP Rights Enforcement Directive.
New enforcement tools in Brazil are encouraging trademark owners to litigate to protect their rights and claim monetary compensation for infringement
Trademark rights can be enforced in Canada on the basis of both registered and unregistered rights, under the federal statute and the common law tort of passing off. Remedies include interlocutory injunctive relief, but proving irreparable harm often presents a tremendous challenge.
The issue of how best to protect trademark rights in China is one faced by many multinational companies. This article aims to provide some tips on successful enforcement in China.
Mark owners seeking a preliminary injunction must file their request with a local bailiff’s court while full infringement proceedings should be filed with the Maritime and Commercial Court – a specialized court.
United Kingdom - Clifford Chance LLP
EU legislation provides a number of means by which IP rights may be enforced. In addition, various proposals and initiatives are pending in relation to criminal sanctions and the fight against counterfeiting and piracy.
Germany’s long tradition of trademark right enforcement ensures that brand owners are well protected. However, the recent implementation of the EU Unfair Commercial Practices Directive and the IP Rights Enforcement Directive introduced some small but noteworthy changes
The enforcement of IP rights in India remains inconsistent. While the Indian judiciary regularly displays remarkable flexibility with regard to protection, the enforcement of IP laws by law enforcement agencies leaves much to be desired
Enforcing trademark rights in Israel can be done through the usual channels of the courts, the police and Customs. Filing petitions before the registrar of trademarks, particularly in cases of conflicting applications, should also be considered.
Italian statutory law provides all the tools necessary for the effective enforcement of trademark rights. This is further enhanced by the existence of specialized IP sections within the courts. However, some peculiarities of the Italian system mean that the courts are swamped by cases challenging the validity of registered trademarks.
In Mexico trademark rights are enforced mainly through the Trademark Office. The enforcement of famous and notorious marks is governed by specific rules.
Trademark owners seeking to enforce their rights in Norway should typically start civil proceedings. However, mark owners should also consider applying for customs surveillance and should make use of alternative resolution bodies for solving unfair competition and domain name disputes
The implementation of the IP Rights Enforcement Directive in Portugal represented a turning point in the country’s approach to enforcement. However, one year on, many questions remain unanswered
The debate surrounding the conflict between trademarks and trade names is not new in Romania. However, case law is developing, with certain courts finding that a trade name which infringes an earlier registered mark must be amended
Determining which court has jurisdiction over a particular dispute is crucial for IP rights owners. Russian law provides a number of criteria to answer this question, but uncertainty remains as to certain kinds of IP cases
Before the entry into force of the Trademarks Act in 2001, trademark owners struggled to enforce their rights before the courts. Further amendments were introduced by Act 19/2006, which implemented the IP Rights Enforcement Directive.
When it comes to enforcing their rights in the United States, mark owners can choose between a vast array of tools, including arbitration, litigation and anti-counterfeiting actions.
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