World Trademark Review Issue 22
John Batho and Girija Shettar
Prosecution and litigation are two central columns supporting the
business of protecting trademark rights in the United States. The first
of those pillars has undergone a significant change in recent months,
while the second remains as complex as ever. In this three-part special,
WTR examines and provides guidance on the latest developments at
the US Patent and Trademark Office (USPTO) and the federal courts.
By overturning the Medinol doctrine on fraud, the
Federal Circuit has removed the threat of cancellation
hanging over many trademarks, but the decision
re-opens the door to falsely obtained registrations in
clear breach of the Trademark Law Revision Act
Joseph R Dreitler
The decision on whether to try a case before a judge or
a jury is a vital part of US trademark litigation strategy.
Picking the wrong option can prove damaging
Roberta L Horton
Most litigation is geared towards obtaining an
injunction, but damages are often well worth
pursuing. The challenge for rights holders is that
the requirements for obtaining an award tend to
differ in each federal circuit
Marylee Robinson and Michele Riley
The co operation fund has ignited an animated
debate across the European Union. WTR asks
whether the money can harmonize Europe’s
fragmented trademark system once and for all
Opposition backlogs have reached alarming levels in
India. The Intellectual Property Office’s new controller
general claims to be taking steps to rectify the
problem, but recent cases show that rules designed to
curb unnecessary delays are being abused
Darshan Ramamurthy and Ranjan Narula
South African trademark law has historically followed
a similar path to EU legislation. However, a recent
ruling from the Supreme Court on distinctiveness
through extensive use appears to signify a dangerous
departure from European precedent
Owen Dean and Lauren Frizelle
Selective distribution can be vital to preserve brand
image. Competition policy is changing in Europe and
rights holders must be aware of the implications
Mark A Lubbock, Imbali Iserles and Emily Clark
The ECJ’s decision in the O2 Case has clarified key issues unique to Benelux. However, inconsistencies in
approach are still apparent.
Michiel W Rijsdijk and Milica Antic
Brazil’s new fondness for comparative ads has highlighted ambiguities in the legal regime in this area.
However, there is considerably more certainty over ambush marketing: the country’s selection as host of the
2014 World Cup and the 2016 Olympics have already prompted bills on the subject.
Rodrigo Borges Carneiro
Facebook is bringing in new privacy measures in response to criticism in Canada over its handling of
personal data. The new approach looks likely to have an impact on mark owners' advertising strategies.
Jennifer McKenzie and Catherine Lovrics
Often the best way to make a product stand out is to compare it to competing products on the market. However,
while powerful, comparative advertising treads a fine legal line between good business and unfair competition.
Celia Y Li
While a fully joined-up European advertising policy remains a dream, at least the Danish system has
been updated to provide comprehensive coverage. Moreover, individuals have a strong ally against unfair
advertising in the shape of the Consumer Ombudsman.
Martin Sick Nielsen and Louise Støving
In a landmark decision, the High Court of Madras has attempted to tighten the rules on comparative
advertising. However, the ruling may have opened the door to inconsistency in the interpretation of the
law in this area.
Is the online use of a third-party mark to link through to competitor products lawful? Case history in
Israel to date shows an increasing leniency towards this activity - Oren Mandler and Kfir Luzzatto analyze
the reasons why.
Kfir Luzzatto and Oren Mandler
Advertisers must take into consideration provisions of the Consumer Code and Legislative Decree 145/2007
when devising a marketing campaign. Any breach of the rules could lead to the advertisement being
suspended and a fine.
Donatella Prandin and Daniele Caneva
A recent high-profile marketing initiative by a Mexican pharmaceutical company appears to be a clear
example of unfair competition. This article puts the campaign in context and looks at the likely outcome
for the advertiser.
Norwegian law offers several means of enforcement against unfair and comparative advertising. This article
analyzes the options available and provides an overview of recent amendments to the Marketing Control Act.
Toril Melander Stene
The legislation on unfair and comparative advertising has its roots in the rules on unfair competition.
The introduction of changes to the Advertising Code in 1998 clarified the law by implementing the EU
Comparative Advertising Directive.
Gonçalo da Cunha Ferreira and Paula Veiga
A boom in advertising over the past 10 years is reflected in the development of related legislation. However, there
is limited case law from the courts in this field due to the significant enforcement powers of regulatory bodies.
Dragos Vilau and Ionut Lupsa
Russian advertising law is not extensive and can be ambiguous, but an analysis of recent cases reveals that
the legislation is, for the most part, interpreted intuitively.
Aleksey Ivanov and Mark Chizhenok
The sprawling legislative regime governing advertising, along with a fragmented administrative system,
means that practitioners must stay on their toes when trying to determine whether an advertisement is
permitted in Spain.
Joao Miranda de Sousa and Patricia Herrero
The advocate general of
Europe’s highest court, Luís
Miguel Poiares Pessoa Maduro,
has given his backing to
Google’s AdWords system,
The Internet Corporation for
Assigned Names and Numbers
(ICANN) has come under fire
from brand owners over its
handling of the trademark
protection policy for the
expanded generic top-level
domain (gTLD) space developed
by the Implementation
Recommendation Team (IRT).
The protection framework in
China continues to develop with
the China Trademark Office
bringing into force the
Regulation on Issues in Relation
to Trademark Assignments.
Turmoil in the world economy
continues to affect the
trademark industry, with
organizations slashing costs in a
bid to weather the storm.
The pace of change on the Internet means
that a mark could potentially become
generic within a matter of months. But is
the use of a mark as a verb, so often the
first step to ‘genericide’ in the past, now
really such a bad thing? Is it time to allow
marks “to verb up”?
While brand owners seek a common
approach to the treatment of goods in
transit, counterfeiters are using the
current rules to hide their tracks. Without
urgent attention, the tide of fake goods
could overwhelm rights holders’ defences
At first glance, two recent landmark US
decisions suggest a divergence in
approach to online contributory
trademark infringement. Scratch under
the surface, though, and consistency in
the application of previous rulings
Anthony J Biller
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