World Trademark Review Issue 27October/November 2010
Frederick Mostert, chairman of the Walpole IP & Brand
Protection Working Group, suggests that the solution
to the problem of trademark piracy on online auction sites can be found by drawing on historical experience
It has been a busy year in Alicante. While efforts to tackle the
backlog of opposition files and long processing times continued, the Office for Harmonisation in the Internal Market (OHIM) also launched TMview, unveiled and implemented the initial framework within which national offices and users can apply for support from the 50 million OHIM Cooperation Fund, found itself proposed for potential anti-counterfeiting responsibilities and appointed a new president (the latter resulting in questions over the selection process after just one name was forwarded for consideration by the European Council).
As he prepares to vacate the president's chair at the
European trademark agency, Wubbo de Boer reflects
on his decade-long tenure and shares his thoughts on
Almost 20 years after the enactment of EU Regulation (40/94), the path to a uniform CTM system still has a number of obstacles to overcome
Trademark law is not practised in a bubble. Smart trademark
counsel know that their team must dovetail with other departments in order to meet the companys strategic objectives. They also understand that beyond the registration certificates lies a world where brands brighten up store shelves and billboards. The in-house trademark counsel is a nexus not just between internal teams, but also with the outside world. It is thus vital that trademarks are viewed in their wider commercial and political context.
To achieve success in pleading before the Trademark Trial and Appeal Board (TTAB), it is important to understand the differences between opposition proceedings in the United States and Europe, as well as grasping the intricacies of TTAB proceedings themselves. Successful navigation of the system can not only increase your chances of success, but also save money.
Gideon Franklin Rothwell and Anne M Sterba
Bose may have shaken the world of US practitioners, but now their Canadian counterparts are considering whether two decisions at home could signal a trend towards a Medinol
-style approach to misstatements in trademark applications
As video games become more realistic and more
interactive, the issue of in-game trademark use raises
new concerns. And a traditional trademark
infringement analysis may no longer be suitable
Russell J Frackman and Joel D Leviton
The results of a six-month study present a unique insight into marketing perspectives on sports brand protection and suggest a growing need for marketers to work more proactively on legal protection mechanisms
An analysis of the counterfeiting and ambush
marketing challenges experienced in South Africa
reveals some valuable lessons for brand owners
and event organisers
Debbie Marriott and Marius Haman
The process to reach consensus on the trademark protection mechanisms proposed for the new generic top-level domains (gTLDs) has encountered another delay, just ahead of September’s expected decision on the matter.
Anheuser-Busch InBev has failed in its 14-year effort to register its famous BUDWEISER mark as a Community trademark (CTM) in the European Union. The Court of Justice of the European Union (ECJ) ruled on July 29 that Budejovický Budvar’s earlier rights in Germany and Austria were sufficient to show genuine use of the mark in the Community and could therefore block AB InBev’s application.
The Colombian registry behind the widely marketed ‘.co’ toplevel domain name has reiterated that it will continue to champion the rights of trademark owners.
A judge in the US Court of Appeals for the Ninth Circuit has handed the Bratz doll brand back to MGA Entertainment, overturning the district courts earlier judgment after which Mattel claimed victory.
WTR presents a round-up of news from around the globe.
Rumours recently circulated that the
trademark function would be spun off
from India's patent and trademark office.
With the office still burdened with a significant backlog of work and accession to the Madrid Protocol looming, would
such a move be a help or a hindrance?
Manisha Singh Nair
Let's face it: we are not yet winning the war against counterfeit products. Despite the introduction of stronger laws with tougher penalties, improved enforcement resources and better training for customs officers in
intercepting and identifying fakes, each year the illicit trade expands. This has led to a growing belief that the fight cannot be won solely by measures aimed at disrupting the
supply of such goods.
Domain name infringers target names that deliver the greatest return on investment. Familiarising yourself with their tactics, and using that knowledge to protect your intellectual property, is key in the fight against cybersquatting
Vincent D'Angelo and Colin Darbyshire
Co-published editorialCountry Correspondents
Publicity and image rights
In Canada, personality rights enjoy common law and statutory protection, stemming from an individual’s publicity rights (which are proprietary in nature) and the right to privacy (a personal interest). In terms of common law protection, the tort of misappropriation of personality is available to individuals (outside Quebec) who have suffered economic injury as a result of the violation of their publicity rights.
Legislation on image rights is becoming increasingly necessary. With the rapid development of China’s market economy and the emergence of new forms of marketing models, there is a growing interest in new forms of property rights – image rights – to deal with the growing commercial value of celebrities’ fame and identity.
The need for the Indian legislature to recognise publicity and image rights in a statutory manner has never been greater. Celebrities increasingly seek to protect their publicity and image rights due to the rising commercial value of their fame and identity.
Those wishing to protect their image or name need to navigate trademark law, issues surrounding freedom of expression, the Privacy Protection Law and Unjust Enrichment Law.
Italian law provides strong protection for personal names and portraits as trademarks. The relationship between image protection and trademarks is defined by the few articles in the Industrial Property Code that deal specifically with images and personal names in relation to trademarks.
A number of legal protections are available for the protection of publicity and image rights.
While national jurisprudence defends the nature of the image right as a personality right with important patrimonial value, economic exploitation can arise from the broad scope for negotiation in comparison to other personality rights.
The forthcoming Civil Code will dramatically impact on image rights protection. The protection of image rights was first acknowledged in Romania in the 1991 Constitution, but only as a general and indirect principle (as a limit to the freedom of expression).
Although publicity and image rights might appear to have most in common with copyright, of all IP rights, this is not in fact the case. Copyright concerns property, whereas publicity rights concern privacy. The use of images may or may not be commercial – commercial use comes to mind when the image of a famous person is used.
Image rights are fundamental rights enshrined in the Spanish Constitution, yet a number of factors hamper effective judicial protection.
Practitioners from around the globe offer practical advice on creating an effective, budget-friendly anti-counterfeiting strategy
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