WTR 21 - World Trademark Review

World Trademark Review Issue 21 October/November 2009

Inside track – MARQUES/Coty Prestige

Ahead of the annual MARQUES conference in Brighton, United Kingdom, from September 15 to 18, the chair of the Association of European Trademark Owners outlines the organization's strategy and shares his thoughts on key issues affecting the trademark industry in general, and the Coty Prestige group in particular
Adam Smith


At the edges of protection in Latin America

Border protection in Latin America is a complex operation. However, some countries, including Argentina, have introduced highly effective new measures that may inspire change across the region
Gustavo Patricio Giay

Running like clockwork

BP recently announced that it has scrapped its head of trademarks role. WTR examines the thinking behind this decision and wonders what the move says about how corporations can align their trademark practice with the core business strategy
Adam Smith

Assessing the overhaul at OHIM

WTR’s exclusive survey of the CTM system explores the reaction from leading filing agents to the cut in fees and gauges OHIM’s performance over the past year
John Batho

Updating the Lanham Act for the internet age

The development of the Internet has exacerbated the conflicts and uncertainty in US trademark law – to the point where it now seems necessary to amend the Federal Trademark Act
Kimberley A Isbell

Private lives and publicity rights

Using a famous person’s identity to promote a product or service can be very tempting for marketers, but if handled incorrectly it can lead to publicity right claims that may extend beyond the celebrity’s lifetime
Edward E Vassallo and Jessica Hiney

Smart thinking on phonewords

Word telephone numbers, which substitute numerals with letters, have been widely used in the United States for years, but as they become more common in other countries, it is time to consider the risks such numbers pose, in particular with regards to domain names
Julian Gyngell


EU Customs Regulation clarified and criticized in key decisions

The EU Customs Regulation (1383/2003) is coming under increased scrutiny from brand owners. Some are suggesting that its wording is unclear and prevents Customs and the courts from taking necessary action

Russia issues new guidelines on revocation

The Russian Patent and Trademark Office has issued guidelines to clarify the circumstances in which a party may file a request for the revocation of a trademark on the grounds of non-use

Tough stance taken on non-traditional marks in Europe

A number of rulings from across Europe indicate that courts are taking a hardline approach to non-traditional signs and shape marks in particular.

New USPTO director confirmed

David Kappos has been confirmed as the new director of the US Patent and Trademark Office


Trademark management
Taxing decisions for trademark managers

While it can be expensive to acquire, maintain and enforce trademark rights in the United States, it is crucial to bear in mind that some of the costs associated with trademark management may be subject to significant tax deductions
Jeffrey Van Hoosear

Counterfeiting perspectives
Too much pressure

UK Customs no longer accepts witness statements from mark owners as the basis to dispose of counterfeit goods seized at the border. This will translate into significant cost increases for brand owners
Mark Bearfoot

The view online
Navigating new networks

The rapid pace of development in the world of Web 2.0, and social media sites in particular, could be seen as a benefit to brand owners, but it has also raised new concerns regarding trademark infringement
Brian J Winterfeldt

Co-published editorialCountry Correspondents

Pharmaceutical trademarks

Netherlands - SteinhauserRijsdijk Advocaten

The main issues presented by pharmaceutical trademarks in Benelux concern their descriptiveness, the relevant public and parallel imports

Brazil - Dannemann Siemsen Advogados

Trade dress issues in relation to pharmaceutical products have become more apparent in Brazil as trade in generic drugs increases. Luckily, local law provides adequate protection against imitation.

Canada - Bereskin & Parr LLP

Many trademark challenges are specific to the pharmaceutical industry. Issues include whether clinical trials can be considered trademark use in Canada – a prerequisite to trademark registration – and the limited extent to which pharmaceutical trademarks can be used in advertising.

China - Kangxin Partners PC

As in most other jurisdictions, in China pharmaceutical companies must navigate a dual system of registration and approval of their trademarks and the commercial names of their products.

Denmark - Zacco

As with all EU member states, Denmark tightly regulates the use of pharmaceutical trademarks. This analysis examines how Denmark has aligned itself with the EU model.

India - Luthra & Luthra Law Offices

The Indian courts have adopted the principle of trans-border reputation to protect foreign pharmaceutical marks that have not been registered in India.

Israel - Luzzatto & Luzzatto Patent Attorneys

Substantive legislative changes have opened the door to the parallel importation of pharmaceuticals in Israel. Parallel importation cannot be prohibited, unless the goods undergo substantial changes such that they can no longer be attributed to the mark owner.

Italy - Bugnion SpA

Inconsistencies in approach to the test of likelihood of confusion make it difficult to evaluate in advance the risks associated with adopting a pharmaceutical trademark in Italy.

Mexico - Olivares & Cia

A drug marketing authorization can be granted only if the name applied for varies by at least three letters from previously registered names. However, this rule is now being challenged

Brazil - Garrigues Abogados & Asesores Tributarios

Pharmaceutical trademarks in Portugal must meet both the requirements for registration as a trademark and those for eligibility as a medicine name, which are much stricter.

Romania - Vilau & Mitel

The EU courts have wrestled with the likelihood of confusion test for pharmaceutical marks over the years, often coming to seemingly conflicting conclusions. The Romanian courts, on the other hand, have preferred to keep things simple and have taken a more consistent line.

Russia - Gorodissky & Partners

Part IV of the new Civil Code establishes the basic regime for the protection of pharmaceutical trademarks in Russia. Rights holders must also be aware of legislation governing the use of medicines, and practice at the Patent and Trademark Office and the courts.

Spain - Garrigues Abogados & Asesores Tributarios

Spanish practice on pharmaceutical trademarks reflects recent developments at EU level. This article examines the relationship between such marks and international non-proprietary names and the criteria for determining the relevant public.

United States - King & Spalding LLP

Pharmaceutical trademarks must clear a number of hurdles, including distinct and independent reviews by the US Patent and Trademark Office and the Food and Drug Administration.


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