World Trademark Review Issue 23 February/March 2010
WTR asked a range of trademark professionals,
industry representatives and legal specialists to
highlight the issues that they felt were most
significant in 2009 and what they anticipate as the
major developments in 2010, either in their specific
jurisdiction or on the international agenda.
After years of fierce debate and political
procrastination, several important jurisdictions
in Latin America seem poised to accede to the
Madrid Protocol in 2010. WTR investigates the
efforts to push through accession, and how brand
owners and local agents are adapting their
practices in preparation.
With many US motor industry brands being acquired
by Asian companies, challenges remain for both the
new owners and the US industry left behind.
Weston Anson and Fernando Torres
The dispute over the Danone-Wahaha joint venture
offers some valuable lessons for companies considering
partnerships in Asia. Many of the problems that can
arise are preventable through careful planning and an
understanding of local business culture.
Brett McGuire, Chris Vale and Yihong Ying
With the global economic slowdown hampering the
development of international markets, over the past
year the Chinese courts have issued new legal
interpretations in a bid to safeguard domestic growth.
However, this has led to courts that are more cautious to
award damages, often siding with local interests.
Zhen Feng and Jinjing Zhang
If the ECJ accepts the advocate general’s recent Google
opinion, its decision will have far-reaching effects on
the advertising industry by aligning the European view
more closely with that of the US courts. This would
have a number of consequences for brand owners.
Alan Sutin and Stephen Gare
WTR looks back at 10 years of CFI trademark rulings
and asks what challenges lie ahead for the newly
named General Court.
Peter Gustav Olson
While it may seem logical for Community trademark
owners to expect pan-European remedies where
infringement is established in one member state, the
reality is somewhat different. A recent dispute over
express shipping could lead to some much needed
clarity on this issue.
Sarah Bailey, Angus Mclean, Rohan Menon, Eva-maria Emsinghoff and Laurens Kamp
Despite announcing that it will again pursue an
independent application for WTO membership,
fundamental issues of trademark enforcement and IP
protection in Russia still have not been addressed.
Janet L Hoffman, Denis I Khabarov and Tom Thomson
Company and commercial names have a direct impact
on trademark registration in Russia. At present, the
non-registration of commercial names does not
prevent them from opposing registered trademarks –
meaning that potentially no mark is safe.
Julianna G Tabastajewa and Yulia A Yarnykh
The marketing-trademark relationship is critical to
branding success, yet there is a longstanding
perception that the two departments are doomed.
The World Intellectual Property Organization (WIPO) and the Office for Harmonization in the Internal Market (OHIM) have signed a memorandum of understanding under which the organizations will share and develop their goods and services classification databases.
Leaked documents containing sections of the draft Anticounterfeiting Trade Agreement (ACTA) suggest that the treaty may focus more on copyright than on trademarks and the fight against counterfeiting.
Thirteen law firm mergers were recorded in the United States during the third quarter of 2009 and WTR has been told that the pace of consolidation is expected to increase in 2010.
The adoption of mandatory rights protection measures in the new domain name space will be recommended to the board of the Internet Corporation of Assigned Names and Numbers (ICANN).
Brand owners need to choose the course
of action taken over comparative
advertising in the United States carefully.
Lynda J Zadra-Symes and Jeffrey Larson
New legislation and international
agreements are set to fight the threat
from counterfeiters – yet still more can be
done to harmonize IP laws and
Direct or contributory cybersquatting by
domain name registrars has yet to receive
much attention. However, if this problem
is not addressed, brand owners could find
the goodwill associated with their marks
hijacked by the very organizations they
rely on to oversee the domain space.
Michael A Grow, Alec Rosenberg and James R Davis II
Co-published editorialCountry Correspondents
Well-known and famous marks
The framework of protection for well-known and famous trademarks stems from existing Benelux legislation. Recent decisions suggest that this system, as transposed into EU legislation and elaborated by further case law, gives famous and well-known trademarks even greater protection than before.
A recent decision has affirmed the principle that famous marks which receive recognition as highly reputed marks following the BPTO procedure deserve protection in all fields of activity, regardless of the possibility of confusion.
While courts take account of the fame of a mark when assessing the likelihood of confusion, all the surrounding circumstances are considered – including evidence of consumer confusion and the connection between the goods and services of the interested parties.
China has gradually enhanced the protection of well-known marks, but brand owners need to ensure that they file for recognition when entering into legal action.
In Denmark, it is recognized that well-known or famous marks require protection which is broader than merely direct competition. However, to enjoy extended protection, documentation must be submitted which confirms that the relevant consumers have a general and broad knowledge of the mark.
While the courts are applying statutory provisions that afford protection to well-known marks, the lack of guidance on the evidence required to prove that a mark is well known means that brand owners need to rely on judicial precedents in their actions.
There is a long tradition of protection for well-known marks in Israel, but trademark owners need to ensure that they are fully exploiting the advantages of the system.
While Italian legislation does not define what constitutes a well-known mark, their treatment as marks that ‘enjoy a reputation’ means that they enjoy wide protection.
A recent marketing campaign highlights some of the intricacies inherent in Mexico’s trademark legislation.
Well-known trademarks in Norway are protected under the Trademarks Act and, to some degree, the Marketing Act, which requires traders to follow good business practice in their transactions with each other.
The scope of traditional trademark protection is expanding with the recognition of well-known marks and marks with a reputation. Despite there being no legal definitions of these concepts, Portuguese doctrine and jurisprudence are working towards solutions which will enable owners of such marks to defend their rights.
While legislation does recognize marks which have gained fame, the concept is not defined or explained in the law or governing rules.
The protection of well-known and famous marks has long been disputed under Russian law, with the process for registering a mark as well known challenging for brand owners.
Famous and well-known marks are afforded extensive protection in Spain, but while ‘well-known’ and ‘reputation’ denote distinct legal concepts, English-speaking practitioners who are familiar with the Community trademark system need to be careful they are not misled by the Spanish terms for such marks.
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