World Trademark Review Issue 21 October/November 2009
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
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
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
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
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
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
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
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
A number of rulings from across Europe indicate that courts are taking a hardline approach to non-traditional signs and shape marks in particular.
David Kappos has been confirmed as the new director of the US Patent and Trademark Office
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
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
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
The main issues presented by pharmaceutical trademarks in Benelux concern their descriptiveness, the relevant public and parallel imports
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.
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.
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.
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.
The Indian courts have adopted the principle of trans-border reputation to protect foreign pharmaceutical marks that have not been registered in India.
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.
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.
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
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.
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.
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.
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.
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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