World Trademark Review Issue 28 December/January 2011
WTR hears both sides of the Siemens story in an
exclusive interview with the company’s trademarks
and brand teams
With summer holidays already a distant memory,
almost 600 trademark counsel descended on Berlin
for the MARQUES annual conference this September.
WTR presents the highlights of the programme,
starting with the debate over changes to Google’s
This autumn, WTR conducted an in-depth survey to find out how industry is
preparing for the launch of new gTLDs. The data reveals how outside counsel
are devising new business models, what marketing professionals really think
and how brand owners are bracing for their greatest trademark challenge yet
While brand owners may be apprehensive about
Google’s decision to bring its AdWords policy in
Europe into closer alignment with the position in the
United States, should the move be welcomed with
Lee J Eulgen and Kate Dennis Nye
Asia is becoming an increasingly important market for
trademark owners. However, when entering into
trademark licensing agreements, brand owners should
not ‘copy and paste’ the rulebook developed in the West
While stormy economic conditions may make cobranded
ventures more enticing, brand owners must
consider all the potential trademark issues that can arise
The fluid mark stands at the crossroads between
marketing and trademarks – presenting dangers to
both when logos are tampered with
Neil J Wilkof
The United States and European Union take different
approaches to health claims in trademarks and on
packaging. For trademark counsel, an appreciation of
these differences is key to avoiding costly mistakes in
Patrick J Gallagher and Renee Kraft
With more companies highlighting ‘green’ credentials
when promoting their products, the authorities are
clamping down on unqualified claims. For trademark
counsel, the use of environmental claims should be
As Libya endeavours to attract overseas investment,
key questions centre on the level of trademark
protection on offer and how the regime compares to
others in the region. Do the latest changes go far
enough and will brand owners trust a regime that
previously discarded over 20 years of registrations?
The Trademarks (Amendment) Bill 2009 takes India
one step closer to accession to the Madrid Protocol.
Although this is a positive development, questions
remain about the national office’s ability to deliver
on the detail of the bill
Michel Barnier, the European commissioner for the internal market and services, has waded into the genuine use debate, sending a stern warning to national offices challenging the Community trademark (CTM) system.
The full text of the Anti- Counterfeiting Trade Agreement (ACTA) has been published, following the conclusion of the final round of negotiations in Japan on October 2 2010. The meeting in Tokyo saw the parties to the treaty reach agreement in principle, with only a few issues outstanding.
Wubbo de Boer has stated that national offices will need to justify the receipt of Office for Harmonisation in the Internal Market (OHIM) funds under the 50% renewal split arrangement, arguing that it is not enough for the agency to warrant paying out money on the basis that it had to “bribe” national offices to agree to changes under the September 2008 compromise solution.
Google’s liberalisation of its AdWords programme in Europe, allowing advertisers to include third-party trademark terms in advert text, has been “strongly criticised” by trademark owners.
WTR presents a round-up of news from around the globe
Use WTR’s letters page to comment on issues raised in the magazine and WTR Daily, and to air your views on the industry.
On the back of recent ECJ decisions,
Google has implemented a number of
changes to its keyword advertising
system. However, is the upcoming
Interflora ruling likely to signal another
change in the European legal landscape?
Despite the difficulties in registering
colour marks, the Whiskas Purple case
provides comfort to brand owners seeking
to protect colours
Lisa Ritson and Amy Reynolds
Media coverage of a recent British Journal of
Criminology article focused on claims that it
encouraged the purchase of fake luxury
goods and suggested that counterfeits
benefit both consumers and brand owners.
However, the author notes that the
headlines were deceiving and wants
industry to assist in ongoing research
David S Wall
Co-published editorialCountry Correspondents
While trademark rights can exist whether a trademark is registered or not, the advantages afforded to registered marks, whether in respect of enforcement, remedies or provincial regulations, make registration the recommended route to follow.
There are two types of unregistered trademark. The first, type A, is a trademark that is not registered in any class of goods or services within its jurisdiction; the second, type B, is a trademark that is registered in one or more classes or subclasses, but not in the class or subclass concerned in the dispute.
In India, the primary legislation governing trademark protection is the Trademarks Act 1999. The right to institute infringement proceedings under the act is available only to the proprietors of a registered trademark.
Unregistered trademarks, such as trade names, get-ups, trade descriptions, labelling or packaging and other commercial signs, are protected in Israel under various grounds and actions.
In Italy, the Civil Code and the Industrial Property Code ensure protection for unregistered marks, as well as other unregistered commercial signs (eg, insignia, business names and company domain names), but such protection is subject to strict conditions and a number of restrictions.
Trading under an unregistered mark is never a good decision. However, there are certain rights which, under Mexican law, may allow you to continue its use. The way in which commercial signs are protected varies from country to country. However, all legislation follows common objectives.
All trademarks that are used in economic activity may be grouped into certain categories. This article focuses on registered trademarks (ie, those which have been granted protection by a decision of the Patent Office) and trademarks which have not been registered (ie, no official decision on granting protection has been issued), but which enjoy similar protection.
In Portugal, in order to obtain exclusive rights in respect of a distinctive sign used in trade, a decision of grant must be issued by the competent administrative body, the Trademark and Patent Office. The sign may consist of a trademark or a logotype – a Portuguese category of rights which, since the revision of the Industrial Property Code (Decree-Law 143/2008), includes names and emblems of establishment.
Unregistered trademarks are protected under Romanian law if they are recognised as well known. Other commercial signs, such as trade names and company logos, enjoy some level of protection under trademark and unfair competition law.
Russia is a first-to-file country and therefore, according to Russian legislation, trademark rights apply from the moment that the mark is state registered. No rights derive from the use of an unregistered trademark. However, when Part IV of the Civil Code came into force in January 2008, it afforded a degree of protection to commercial indications or signs.
In the Spanish legal system, exclusive rights over a trademark or trade name are obtained through registration. Such registration confers on the proprietor exclusive rights in the relevant sign and allows it to prevent unauthorised third parties from using the sign in the course of trade.
In the United Kingdom, a brand owner can protect its unregistered trademarks and commercial signs through the common law right of passing off. This concept has been developed through case law and manipulated to encompass a wide variety of anti-competitive practices.
In the United States, protection is available for unregistered marks under common law and the federal statute known as the Lanham Act (§ 43(a)(1), 15 USC § 1125(a)(1) (1989)). The owner of a valid but unregistered mark can seek recourse against the copyist in state and federal courts.
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