World Trademark Review Issue 25 June/July 2010
The Court of Justice of the European Union (ECJ)
decision on the questions referred by the French Court
of Cassation in joined Cases C-236/08, C-237/08 and C-
238/08 found that Google’s use of trademark terms as
keywords does not constitute infringement.
The WTR Industry Awards 2010, which will be
presented at a ceremony in Boston timed to
coincide with the 132nd INTA annual meeting,
honour leading trademark teams and
individuals across a range of business sectors.
In this issue, we officially unveil the shortlist.
As the world’s only magazine dedicated to trademark
law and practice, WTR is uniquely positioned to take
the pulse of the industry. Our second annual Global
Trademark Survey illuminates exactly where
trademarks stand in the corporate structure
WTR’s exclusive survey asked trademark counsel around
the world to identify those companies to which they
outsource their trademark and domain management,
and how they rate them. Here are the results
An analysis of INTA membership and annual meeting
participation and programmes, compared against
available industry data, serves as a useful barometer
of the trademark industry
Guidance issued by China’s Supreme People’s Court
has had a significant impact on the decisions handed
down by the Chinese courts over the past year
Linda Chang and George Chan
One of the most hotly debated topics in European trademark law
over the past few years has been the question of whether the
unauthorized use of a trademark as a keyword within a paid online
referencing service (eg, Google’s AdWord programme) constitutes a
use of that mark which the trademark owner may prevent under EU
or national trademark law.
Tobias Malte Muller
In the latter part of 2009, South Africa’s Supreme
Court of Appeal handed down four noteworthy
The position of Israeli courts on three-dimensional
and well-known marks was clarified in 2009
David Gilat and Sonia Shnyder
While last year Brazil won headlines for securing the
right to host high-profile sporting events, important
court decisions on the enforcement of trademark rights,
the use of foreign language terms, parallel imports and
marks of high renown received less publicity; but they
lie at the heart of the country’s success
Henry Knox Sherrill
The Bose decision deservedly dominated the headlines
in 2009, but a number of rulings from the Trademark
Trial and Appeal Board also merit close attention
John L Welch
Criticism websites can be problematic for trademark
owners, which are turning to the UDRP more
frequently to tackle such issues. However, this is one
of the main areas of contention among panellists,
with conflicting views on how to address the
A trademark owner has a legal duty to police its mark. But when does good-faith, albeit aggressive, protection of trademark rights become bad-faith bullying based on a claim of rights which do not exist?
Brand extensions afford companies the opportunity to
leverage loyalty to established brands; but diffusion
needs to be the result of a clear and logical analysis of
the brand's attributes
Having decided that your brand is suitable for
extension, the next critical consideration is the
construction of a trademark licence agreement that will
not have negative repercussions for your brand legacy
Rochelle D Alpert
The advocate general’s opinion on LEGO’s attempts to
register its building block as a 3D mark attempts to
tackle inconsistency in the approach to registration.
Given the uncertainty, many brand owners are asking
how useful such marks actually are
David A Stone
IP protection in the fashion industry has been subject
to little external regulation to date, with some
arguing that taking inspiration from others is central
to the industry’s success. However, things are
changing and there are lessons to be learnt from the
The Court of Justice of the European Union (ECJ) has found that Google’s use of trademark terms as keywords does not constitute infringement, but noted that the advertiser’s use likely will – a decision which could cause the cost of online enforcement to rocket.
The latest World Intellectual Property Organization (WIPO) statistics reveal that international trademark filings under the Madrid system fell by 16% in 2009, in a stark illustration of the impact of the global financial crisis.
The parties negotiating the Anti-counterfeiting Trade Agreement (ACTA) have published a full draft of the controversial treaty, which closely mirrors previously leaked texts and has sparked fears that the World Intellectual Property Organization (WIPO) is being undermined.
WTR presents a round-up of news from around the globe.
The Trademark Technical and Conforming Amendment Act 2010 provides for a study to examine “the extent to which small businesses may be harmed by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner”. The act was sponsored by Senator Patrick Leahy (Vermont), in whose state Monster Energy Drinks sought to prevent a microbrewery’s use of the mark VERMONSTER for beer.
The recent Audi decision provides
trademark owners with useful guidance
over the development of slogans
Gino Van Roeyen
New holographic technology is
increasingly being utilized to help brand
owners to tackle counterfeiting, but it will
succeed only if used in tandem with good
The USPTO allows in-world use to qualify
as ‘use in commerce’ for purposes of
trademark registration, but how should
brand owners protect their marks in virtual
worlds and drive real-world profits?
James G Gatto and Jenna F Leavitt
Co-published editorialCountry Correspondents
Domain name management
There are a number of obstacles for foreign companies to overcome when registering a ‘.br’ domain name.
Use of a ‘.ca’ domain is often expected by Canadian consumers, but there are obstacles to registration and cybersquatting remains an issue.
It is not normally feasible to register all possible domain name variations to protect your trademark, so brand owners need to carefully consider their selection methodology.
With more companies doing business in India, ‘.in’ domain names are coming under increasing demand.
The IL-DRP plays a significant role in the resolution of domain name disputes through out-of-court proceedings. However, the source of its legal authority and the binding force of its decisions are uncertain.
A number of issues are raised by the registration of ‘.it’ domain names, but these need to be overcome as ownership of domain names is crucial to obtain IP rights that can be defended against third parties.
The management of a well-structured domain name portfolio is at the heart of successful trademark protection and, crucially, will help to prevent costly actions later.
While the Romanian domain name registry has assumed less responsibility than similar bodies in other jurisdictions, brand owners have a number of legal tools to protect their interests online.
With the ‘.рф’ domain extension approved, it is important that trademark owners plan registrations now, or risk costly enforcement action later.
The time has come for brand owners to fight back against online infringement.
While litigation is usually regarded as a last resort in the event of infringement, sometimes it is difficult to avoid. In such cases it is important to ensure that you have the right strategy in place – particularly when the infringement has a cross-border dimension. Nowadays, when problems can arise in many corners of the world, the need to think ahead and understand how systems work in different countries is greater than ever.
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