World Trademark Review Issue 24April/May 2010
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
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
While Canadian and US trademark laws have become
relatively ill suited to preventing parallel imports,
there are still instances where their effectiveness can
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
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
A forthcoming international standard will set out best
practice for brand valuation – and could fundamentally
alter the relationship between the trademark and
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
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
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
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
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.
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)
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 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
WTR presents a round-up of news from around the globe
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
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
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
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
Co-published editorialCountry Correspondents
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.
Despite a lack of specific remedies for counterfeiting in Canada, there are still options for brand owners.
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’.
A number of recent cases highlight the anti-counterfeit protections brand owners can draw on.
There are a number of enforcement procedures open to brand owners to enforce their rights, but the selection process is critical to success.
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.
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.
In the face of increased levels of counterfeiting, Romanian law provides a range of important protections for brand owners.
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.
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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