World Trademark Review Issue 20 August/September 2009
A review of the UDRP’s defining characteristics and key
decisions is in order as the policy prepares to celebrate
its 10th anniversary at a time of intense speculation
regarding the future direction of the Internet
James L Bikoff, David K Heasley, Michael T Delaney and Phillip V Marano
Innovations appear online daily. The next big thing
will undoubtedly be the expansion of the generic
top-level domain space next year, but brand owners
fear that the step could undermine their rights.
WTR joins the debate
In the current economic climate is defensive
registration a proactive means of securing
protection for global brands or a risky venture in
light of well-established use requirements?
On May 19 2009 WTR announced the winners of its third Industry Awards at a ceremony in Seattle. The awards are designed to recognize the vital work done by in-house trademark counsel, and identify the teams and individuals that are performing their functions to the highest possible standards. The following pages feature profiles of the winners
Over 150 senior IP professionals attended the third WTR Industry Awards (www.Industry-Awards.com) at the stylish Greg Kucera Gallery in Seattle on May 19 2009. Representatives from the nominated teams mingled with leading private practice lawyers at the exclusive champagne reception in honour of the world’s top in-house trademark counsel. WTR wishes to thank all nominees and sponsors for helping to make the Industry Awards 2009 such a successful event.
The International Trademark Association’s (INTA) annual meeting is
still the most important – and busiest – event in the trademark
community’s calendar. This year the conference returned to Seattle
for the “greenest annual meeting” ever, as Katrina Burchell, head of
trademarks at Unilever and co-chair of the meeting, explained at the
opening ceremony. “We live in a competitive world,” Burchell said.
“Trademarks are key to winning that battle, so brands are jumping
on the environmental bandwagon.” INTA leapt on board too this
year, with its special theme of corporate social responsibility. In this
section, WTR looks at some of the meeting’s many highlights, so
numerous that one delegate said she was “too busy to sleep!”.
The global downturn and changes to domestic practice
and procedure have altered Spain's prosecution and
enforcement landscape significantly. WTR takes a
detailed look at the effects on the Spanish legal market
The laches defence can prove an effective weapon for
striking out a trademark infringement claim in the
United States. However, a controversial ruling from
the Ninth Circuit may have served to raise the
evidentiary burden placed on defendants
Mark S Sommers and Naresh Kilaru
With demand for luxury goods tumbling, many brand
owners are looking to licensing as a means of boosting
income. A recent decision from the ECJ could help
them maintain a firmer grip on their rights
Matthias Koch and Kathrin Samwer
Among the top 10 cases of the year selected by the
Chinese People’s Supreme Court, five were of key
significance to trademark owners. The selection
criteria left many puzzled, but a new analysis shows
that each decision is remarkable in its own way
George Chan and Tim Smith
Cosmetics giant L’Oréal was involved in three eagerly awaited decisions from courts in Europe in the past few weeks – but with mixed results.
The US Court of Appeals for the Second Circuit has ruled that unique product codes (UPC) are protected under trademark law (Zino Davidoff SA v CVS Corporation (Case 07-2872-cv, June 19 2006)). It is a breakthrough in the fight against counterfeit and greymarket goods.
As part of its continuing efforts to protect well-known marks, the Adjudication Committee of China’s Supreme People’s Court has issued an “Opinion on Certain Issues Concerning the Protection of Well-Known Marks in Civil Disputes”.
Besides the usual, already daunting rights
and obligations involved in a licence
agreement, a recent decision revisits the
claim that a fiduciary relationship may
exit between licensors and licensees
Neil J Wilkof
The penalties imposed on counterfeiters
in the Gulf region are not stringent
enough to act as a deterrent. Brand
owners are calling for a rapid
implementation of the Unified Gulf
Cooperation Council Trademark Law to
help them in their fight
Courts from five different EU jurisdictions
have referred questions to the ECJ with
regard to keyword advertising. Further
guidance on the issue is vital
Simon Bennett and Benjamin Kieft
Co-published editorialCountry Correspondents
The protection afforded to non-traditional trademarks in Benelux is governed in large part by EU regulations and case law. However, Benelux courts are often prepared to grant protection where the EU instances are not.
Although the definition of ‘trademark’ under the Industrial Property Law is restrictive, most non-traditional signs can enjoy a degree of protection in Brazil
Three-dimensional shapes can be protected under trademark, industrial design and/or copyright law in Canada. To obtain immediate and comprehensive rights, brand owners should consider an integrated strategy combining all three protection schemes.
Three-dimensional trademarks can be registered in China as long as they are distinctive and non-functional. However, trademark owners should be aware that similar shapes may already have been registered as patent designs.
In principle, any sign that is distinctive and can be represented graphically may be registered as a trademark in Denmark, but these requirements often prove to be insurmountable hurdles for non-traditional marks.
The Indian Intellectual Property Office is putting together a manual on trademark practice and procedure which provides thorough guidelines on the requirements to register non-traditional marks. This article examines the latest proposals in detail.
Israeli law recognizes a broad range of signs as being registrable as trademarks. However, the Trademark Office’s practice on this matter is rather restrictive.
The conservative approach of the Patent and Trademark Office and the courts to the protection of non-traditional trademarks, as well as limited national case law on the issue, mean that much remains to be clarified with regard to the scope of protection of such signs.
The definition of ‘trademark’ in Mexican law is restricted to signs that can be perceived visually. In practice, the Trademark Office narrows this definition further – for instance, by not granting registration to colours unless they are combined with other distinctive elements.
Non-traditional marks are, by and large, protectable in Norway, with the restrictions imposed across the European Union also applicable in this non-EU country.
Although a number of non-traditional signs are protectable as trademarks under EU law, Portuguese law and practice are rather more restrictive.
Even though the traditional view that trademarks can consist only of visual signs lingers in Romania, shapes, sounds and colour combinations may be registered as trademarks. Case law regarding other non-traditional marks, however, remains limited.
Part IV of Russia’s Civil Code provides for the registration of an array of non-traditional trademarks. But graphical representation may be an issue in some cases.
Spanish trademark law and practice are bound by EU regulations and case law. However, the Spanish Patent and Trademark Office is even more reluctant than the EU trademark bodies to register unconventional marks.
Non-traditional signs enjoy broad protection in the United States as long as they can function as trademarks. Nonetheless, proving acquired distinctiveness may be challenging for those signs, such as product designs, that lack inherent distinctiveness
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