World Trademark Review Issue 24

April/May 2010

Tackling IP change at Pernod Ricard

Audrey Yayon-Dauvet, group IP director at Pernod Ricard, explains how she shaped the company’s IP function to match the corporate culture
Trevor Little

Features

Talking point: ACTA

The content and format of the Anti-Counterfeiting Trade Agreement (ACTA) negotiations are hot topics of debate, with commentators questioning whether the agreement will deal with anti-counterfeiting at all or rather focus on copyright infringement in the digital environment. The secretive nature of the discussions, which has been characterized by a series of document leaks, has also come under fire. WTR speaks to Stan McCoy, assistant US trade representative for intellectual property and innovation at the Office of the US Trade Representative (USTR), for the latest on the discussions and asks industry commentators for their views
Trevor Little

Working with Customs to stem the counterfeit tide

There are few, if any, downsides to working closely with customs authorities and enforcement agencies in the fight against illicit trade. But creating a meaningful relationship is not always as straightforward as it should be
Trevor Little

Different shades of grey in Canadian and US approaches to parallel imports

While Canadian and US trademark laws have become relatively ill suited to preventing parallel imports, there are still instances where their effectiveness can be maximized
Antonio Turco

Seizing the initiative over goods in transit

The recent seizure of pharmaceutical goods in Europe has reignited the debate over how goods in transit are treated – with political interests and economic threats threatening to muddy the legal waters
Paul Reeskamp and Eva Den Ouden

Preparing for the future pharmaceutical trademark regime

While the outcome of the US FDA pilot programme on trademark approval is not due until 2011 at the earliest, the scheme offers important pointers for those considering the development of a pharmaceutical mark
Maury M Tepper III

Increasing the accuracy of brand valuations

A forthcoming international standard will set out best practice for brand valuation – and could fundamentally alter the relationship between the trademark and marketing functions
David Haigh

Brand politics

Governments around the world are finally waking up to the importance of brands. WTR investigates how some are now strategizing how to propel domestic brands onto a global stage
Adam Smith

When imitation is not the sincerest form of flattery

Deciding what action to take against infringers can be difficult enough – but what happens when you have an economic partnership with the infringer, as is the case with supermarket lookalikes?
Chris McLeod and Rebecca Chant

When parody stops being a laughing matter

Recent disputes involving Starbucks and The North Face have highlighted the issue of parody as a defence against trademark infringement. While courts have taken different approaches to defining fair use parody, practical lessons can be learnt from previous cases
Dennis S Prahl and Chloe Hecht

The winding road towards harmonization in Latin America

In the last issue of WTR we examined moves to adopt the Madrid Protocol in Latin America. At present, a number of protections are available to mark owners across the region – but it is very much a changing picture
Iris V Quadrio

News

Confusion and speculation surrounds CTM ruling

A ruling of the Benelux Office of Intellectual Property (BOIP) has created uncertainty over what constitutes genuine use of a mark in the European Union However, speculation has also surfaced over the motivations behind the case.

Debate sparked after shock proposal over CTM surplus

The study into the functionality of the European trademark system, being conducted by researchers from the Max Planck Institute (MPI), is moving at a fast pace, with visits to national offices due to conclude in March. However, much of the debate surrounding the study has centred on concerns over its focus after a surprising contribution from the Office for Harmonization in the Internal Market (OHIM)

Opinion builds a new approach to assessing shapes

LEGO has been dealt a new blow in its attempts to register its building block as a 3D mark, with the advocate general of the ECJ arguing that the company should not be granted an EU-wide trademark for the shape

INTA defends position over ‘hijacking’ accusations

INTA has responded to criticism that it tried to “hijack” an online consultation regarding the new generic top-level domain (gTLD) programme, and urged the Internet Corporation for Assigned Names and Numbers (ICANN) to reform its mode of inviting participation

Global view

WTR presents a round-up of news from around the globe

Letters

This month, WTR Daily reported on industry reaction to the decision of the Canadian Intellectual Property Office (CIPO) to open a new consultation on updating the country’s Trademarks Act, with the potential adoption of the Madrid Agreement a key issue. WTR asked CIPO to outline why the consultation has been opened at this time

Columns

Trademark management
Getting in a pickle over the distinction of marks

While many marks avoid becoming generic due to the use of the term in ‘the trade’, a 2004 case could still pose future problems if courts follow its reasoning
Michael Lynd

Counterfeiting perspectives
A sporting chance of success

With a number of international sports tournaments heading to the region, counterfeiting in Latin America looks set to surge. For brand owners, now is the time to review their protection strategies
Patrisia Reyes de Gottschall

The view online
Bucking the UDRP trend

Trademark practitioners should pay close attention to a recent WIPO decision which could set a precedent on the ‘identical or confusingly similar’ element in domain name disputes
Karen Bernstein

Co-published editorialCountry Correspondents

Anti-counterfeiting

Brazil - Dannemann Siemsen Advogados

Although the country lacks both a centralized IP rights database and a standard procedure for border seizures, a range of anti-counterfeiting measures are available in Brazil.

Canada - Bereskin & Parr LLP

Despite a lack of specific remedies for counterfeiting in Canada, there are still options for brand owners.

China - Kangxin Partners PC

Like the manager of a professional sports team, trademark owners bear the pain and glory for their teams’ success and failures. However, China’s trademark laws and enforcement methods can help you turn that ‘L’ into a ‘W’.

India - Luthra & Luthra Law Offices

A number of recent cases highlight the anti-counterfeit protections brand owners can draw on.

Israel - Luzzatto & Luzzatto Patent Attorneys

There are a number of enforcement procedures open to brand owners to enforce their rights, but the selection process is critical to success.

Italy - Bugnion SpA

With Italy’s policing bodies boasting internal departments to investigate IP infringement, and a range of actions possible, the country is well-geared to tackle the counterfeiting threat. However, brand owners must also ensure they police the threat themselves.

Brazil - Garrigues

Over the last few years, both Customs and the courts have become more proactive in the fight against fake goods, with the new Industrial Property Code set to provide further clarification on the extent of IP rights.

Romania - Vilau & Mitel

In the face of increased levels of counterfeiting, Romanian law provides a range of important protections for brand owners.

Russia - Gorodissky & Partners

While few counterfeit goods actually originate in Russia, brand owners need to be aware of the protections in place to guard against the impact of infringements.

Spain - Garrigues

The Spanish spend an average of €285 million on counterfeit goods. While this poses a challenge to trademark owners, protections are available through both Customs and the courts.

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