World Trademark Review Issue 19 June/July 2009

Inside track – INTA/Unilever

Ahead of INTA’s annual meeting in Seattle from May 16 to May 20, the association’s president for 2009 shares his thoughts on, among other things, the effect the economic downturn will have on trademarks and the planned expansion of the generic top-level domain space
Véronique Musson


Industry Awards 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
Adam Smith

2008 Case Law Review
WAHAHA remains in Chinese hands

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

2008 Case Law Review
Europe, Middle East and Africa
Dilution landscape in Europe altered by Intel

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
Véronique Musson

2008 Case Law Review
Latin America
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

2008 Case Law Review
North America
Foreign fame is irrelevant in the United States

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
Véronique Musson

Design lessons

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

Preparing for the storm

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
Adam Smith

Canada still at the crossroads

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
John Batho

India’s enforcement crisis
Bordering on breakdown

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
Adam Smith

India’s enforcement crisis
New bill is huge setback to criminal enforcement

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 enforcement system
Ranjan Narula and Darshan Ramamurthy

New case law reopens parallel-import debate in Russia

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
Pavel Sadovsky

Turning to franchising in troubled times

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 should consider
David W Koch and Darrell M Johnson

The essential guide to taking on counterfeiters

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


Chinese Supreme Court clarifies National IP Strategy

China’s Supreme People’s Court has issued a set of guidelines with which to interpret the country’s notoriously complex National IP Strategy.

Taiwan court awards record damages

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.

Landmark US keyword case back on track

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.

CTM fees slashed – at last

The fees for registering a Community trademark (CTM) were reduced on May 1.


Trademark management
TTAB provides further guidance on fraud

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

Counterfeiting perspectives
Secrecy and controversy

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
Michael Geist

The view online
New gTLDs delayed as rights protection moves to centre stage

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 protection mechanisms
David Taylor

Co-published editorialCountry Correspondents

Trademark enforcement

Netherlands - SteinhauserVandenBrinkHeeziusRijsdijk Advocaten

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.

Brazil - Dannemann Siemsen Advogados

New enforcement tools in Brazil are encouraging trademark owners to litigate to protect their rights and claim monetary compensation for infringement

Canada - Bereskin & Parr LLP

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.

China - Kangxin Partners PC

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.

Denmark - Zacco

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
European Union

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 - Jonas Rechtsanwaltsgesellschaft mbH

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

India - Luthra & Luthra Law Offices

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

Israel - Luzzatto & Luzzatto Patent Attorneys

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.

Italy - Bugnion SpA

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.

Mexico - Olivares & Cia

In Mexico trademark rights are enforced mainly through the Trademark Office. The enforcement of famous and notorious marks is governed by specific rules.

Norway - Zacco

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

Brazil - Garrigues Abogados & Asesores Tributarios

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

Romania - Vilau & Mitel

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

Russia - Gorodissky & Partners

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

Spain - Office for Harmonization in the Internal Market (OHIM)

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.

United States - King & Spalding LLP

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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Issue 74