World Trademark Review Issue 27

October/November 2010

Peter Dengate Thrush: the internet’s ringleader

On the cusp of the new generic top-level domain application period, ICANN Chairman Peter Dengate Thrush tells WTR that the trademark community may have delayed the process enough and that the board may be ready to force it into submission.
Adam Smith

Features

Auction sites: time for a history lesson

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
Trevor Little

OHIM - the year in review

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).
Trevor Little

Goodbye to the man behind Europe's trademarks powerhouse

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 OHIM's future
Adam Smith

Community trademark courts - dream come true or work in progress? Premium content

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
Antonio Castán

Policy matters: trademarks in the real world

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 company’s 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.
Adam Smith

Navigating the Trademark Trial and Appeal Board

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

Canada's faithful: avoiding fraud claims at the IPO

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
Jeffrey Vicq

Trademarks, video games and the First Amendment: an evolving story

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

Foul play in sports branding - the marketer's perspective

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
Nathan Gannon

The 2010 World Cup - practical lessons in brand protection

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

News

New doubts cast over ICANN’s expected gTLD decision

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.

Final blow for AB InBev’s BUDWEISER trademark

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.

‘.co’ woos trademark owners in spite of domain bad actors

The Colombian registry behind the widely marketed ‘.co’ toplevel domain name has reiterated that it will continue to champion the rights of trademark owners.

Mattel loses out on billion-dollar brand

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 court’s earlier judgment after which Mattel claimed victory.

Global view

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

Columns

Trademark management

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

Counterfeiting perspectives

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.
Bob Boad

The view online

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

Canada - Bereskin & Parr LLP

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.

China - Kangxin Partners PC

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.

India - Luthra & Luthra Law Offices

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.

Israel - Luzzatto & Luzzatto Patent Attorneys

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.

Italy - Bugnion SpA

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.

Mexico - Uhthoff Gómez Vega & Uhthoff SC

A number of legal protections are available for the protection of publicity and image rights.

Brazil - Garrigues

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.

Romania - Vilau & Mitel

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).

Russia - Gorodissky & Partners

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.

Spain - Garrigues

Image rights are fundamental rights enshrined in the Spanish Constitution, yet a number of factors hamper effective judicial protection.

Co-published editorialRoundtable

Taking the fight to the counterfeiters

Practitioners from around the globe offer practical advice on creating an effective, budget-friendly anti-counterfeiting strategy

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Issue 66