World Trademark Review Issue 26
Although hard data on Chinese trademark trials is
like gold dust, WTR has uncovered a set of statistics
that sheds new light on China’s evolving trademark
When it comes to transliterating a brand to suit the
Chinese market, the first step is to forget all you know
about how language works in the West. Get this process
wrong and your trademark will be open to attack.
Having transliterated your brand and company names,
the next step involves properly protecting them both
to counter the risk of infringement.
On May 25 2010, WTR announced the winners
of its fourth Industry Awards at an exclusive
ceremony in Boston’s Harvard Club. The awards
are designed to recognize the vital work carried
out by in-house trademark counsel, and identify
the teams and individuals that are performing
their functions to the highest possible
standards. Over the following pages we speak to
the winners and explain why they were judged
to be leading examples of industry best practice.
WTR takes a look at the blockbuster of the trademark
calendar: the annual meeting of the International
Trademark Association, held this spring in Boston.
Adam Smith, Lise Charles and Trevor Little
Trademark counsel rarely have the time and
resources to contribute fully to decisions on corporate
acquisition activities. But to provide expert, effective,
transaction-specific trademark due diligence, several
issues should be considered.
At first glance, the recent ECJ decision on Google
keywords clarifies the European position, but dig
deeper and uncertainty remains – mirroring the
position in the United States.
Rami S Yanni and Jerod W Partin
Changes to the domain space have prompted
speculation about the potential threat to brand
owners, yet many have still to review their domain
name strategies to reflect the new online landscape.
So where should they begin?
Sports brands must contend with myriad challenges
posed by their opponents, counterfeiters and
infringers. A sound defence and tough offence are the
keys to prevailing over these inventive opponents.
James L Bikoff, David K Heasley, Michael T Delaney, Phillip V Marano and Taro Konoshima
While trademark counsel rarely have the opportunity
to take to the streets, valuable insights can be gained
from the frontline experiences of investigators –
including the need to respect and understand
Design and trade dress
While there is extensive case law protecting trade dress under the Unfair Competition Law, protection under
trademark or industrial design law should be sought where possible.
Rodrigo Borges Carneiro and Gustavo Andrade
A mixture of trademark and industrial design protection schemes can provide immediate protection
for trade dress.
Justine Wiebe and Scott Pundsack
Different approaches are available for protecting design and trade dress, depending on how established the
product is in the Chinese market.
Gary G Wu
An understanding of the relationship between trademark and design law is essential to protecting
trade dress in India.
A combination of trademark and design registration is necessary to ensure that products and their packaging
obtain the maximum protection in Israel.
Kfir Luzzatto and Moshe Bartal
Whether obtaining protection for 3D trademarks and designs or utilizing unfair competition laws, a range of
protections are available to mark owners in Italy.
Vincenzo Melilli and Claudio Balboni
This year saw judgment in one of the first cases dealing with the collision of industrial design rights
and 3D trademarks.
Tomasz Rychlicki and Joanna Pilka
The lack of any specific protection for trade dress makes the accumulation of protection through
different types of IP right crucial.
Gonçalo da Cunha Ferreira and Isabel Bairrão
With no specific legal concept of trade dress, brand owners must choose from a range of legal protections on
a case-by-case basis.
Aleskey V Kratiuk and Alexander Vasilets
While there is no legal definition of ‘trade dress’ in Spain, protection can still be obtained through
other legal avenues.
Joao Miranda De Sousa and Celia Sueiras Villalobos
Victoria Espinel, the US IP
enforcement coordinator, has
unveiled the administration’s
first joint strategic plan to
combat IP theft. The strategy
contains more than 30 concrete
recommendations to fulfil the
promise of helping and listening
to “victims” (clarified as rights
holders) of IP infringement, as
well as raising the prospect of a
full review of IP laws.
The controller general of the
Indian Intellectual Property
Office (IPO), P H Kurian, has
moved to quash rumours that
the trademark function is set to
be removed from the jurisdiction
of the IPO.
Klaus-Heiner Lehne, a member
of the European Parliament, has
stated that use of a Community
trademark (CTM) in one
member state equals use in the
Community, adding that the
legislative body will ensure that
any reform of the European
trademark system does not
weaken the system.
The UK Court of Appeal has
followed last year’s Court of
Justice of the European Union
(ECJ) ruling in L’Oréal v Bellure,
which stated that unfair
advantage does not require a
likelihood of confusion or
detriment to the mark. However,
Lord Justice Jacob made it clear he
was not happy about having to
“muzzle” commercial free speech,
a move that he argued “amounts
to a pointless monopoly”.
WTR presents a round-up of news from around the globe
The launch of the Apple iPad increases
the need for software developers to walk
the fine line between policing marks and
allowing nominative use.
Gerry J Elman and Scott Powell
With time running out to influence the
scope of ACTA, is it now too late to make
Utah’s new E-commerce Integrity Act is
groundbreaking, but how enforceable will
it be and will it have a wider impact?
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