World Trademark Review Issue 29 February/March 2011
WTR asked a range of trademark professionals,
industry representatives and legal specialists to
highlight the issues that they felt were most
significant in 2010 and what they anticipate will
be the major developments in 2011
Brands that are not used but kept alive in company
books are not dead – they are wasted money-making
Resurrecting disused brands requires a proper analysis
of product lines, industry trends and the consumer
mindset. A survey of previous attempts to revive brands
may help in predicting the likelihood of success
Many trademarks have fallen victim to the recession,
creating an opportunity for those seeking to
reanimate abandoned marks and use them for
commercial gain. While possible in most
circumstances under US law, there are exceptions
Danny M Awdeh and Laurence R Hefter
The new international standard on brand valuations
has been viewed by some as bringing new clarity to a
complex and fragmented industry. But will ISO 10668
really cut through the confusion surrounding brand
Maria Gabriela Salinas Fabbri
Thanks to elaborate brand-building strategies, the
trademark service provider sector is booming. Some
insiders even suggest that it now competes on an
equal footing with the legal profession. WTR charts the
evolution of this market and considers how its future
As web technology advances and enables brand owners to investigate the sale of counterfeit goods online more meticulously than ever before, how is the burgeoning market in anti-counterfeiting search services evolving?
Few disputes over television format rights have
centred on trademark rights, but format owners
need to approach the creation and protection of
their formats in the same way as they would any
international brand launch
Following the introduction of internationalised
domain names, brand owners need to take clear steps
to ensure that their domain name strategy reflects the
new multi-character environment, at both top and
Despite careful planning, the launch of Russia’s
top-level domain (TLD) proved problematic and
highlights some of the trademark issues that can
arise during TLD launches
The divergent treatment of survey evidence in
different jurisdictions poses significant challenges in
creating a survey that will work internationally.
However, this is not impossible and certain tactics,
carefully deployed, can yield positive results
Roberta Jacobs-Meadway and Peter O'Byrne
An internal policy on social media use becomes a
strong weapon when policing external use of your
brand, but communication is key – with both internal
staff and those actively policing the online world
Brian J Winterfeldt and Alexander J Urbelis
The World Trademark Review 1000 will present
exhaustive rankings of the leading law firms,
attorney firms and individual practitioners offering
high-level trademark advice in more than 50
jurisdictions. In this exclusive preview, we reveal the
most cited firms in terms of the number of offices
and individual practitioners identified
as leaders in the field across the globe
While they may appear to be two sides of the same coin,
moving from an in-house trademark role into private
practice requires proper consideration, with both
personal and professional factors coming into play
New Office for Harmonisation in the Internal Market (OHIM) President António Campinos has signalled his intention to embrace an enforcement role for the agency, promising to work with national offices to create a united front against counterfeiters.
The British Brands Group and Institute of Trademark Attorneys (ITMA) have joined forces to voice serious concerns at the approach that the United Kingdom’s coalition government is taking to intellectual property, with trademarks often absent from political debate.
The board of the Internet Corporation for Assigned Names and Numbers (ICANN) has resolved to meet with government representatives to clear up their remaining concerns over trademark protection in the proposed infinite generic top-level domain (gTLD) space.
Albihns.Zacco AB has been expelled from the Association of Swedish Intellectual Property Law Firms (SEPAF) for breach of the organisation’s ethical rules.
For regular jurisdictional updates, see WTR Daily. Delivered straight to your inbox, WTR’s regular email news service provides legal updates, industry analysis and the editor’s pick of the best trademark content from around the globe.
Cloud computing creates many legal
issues, from jurisdictional questions to
privacy and security concerns. For brand
owners, the cloud can be an especially
frustrating place, but by understanding
the legal and business issues involved, IP
risks can be balanced and mitigated
Robert J Scott
No sooner do brand owners succeed in
shutting down an infringing website than
it pops up in a new location. A proposed
US bill aims to step up the fight against
Harley I Lewin
Just when trademark lawyers thought that
they had domain names under control,
here come social network usernames. Is
the trademark industry prepared?
Co-published editorialCountry Correspondents
Internet issues (other than domain names)
Online advertising is a major industry. The Interactive Advertising Bureau of Canada reports that in 2009 Canadian online advertising revenues were C$1.82 billion, and forecasts that in 2010 revenues will rise to C$2.1 billion. In recent years the tension between online advertising and consumer privacy has given rise to several controversies.
It is Saturday afternoon and Journey’s iconic song “Don’t Stop Believin’” is playing on a US college student’s computer. Next up on the playlist is something by Dave Matthews, followed by U2, Michael Jackson, The Rolling Stones and The Beatles: a well-thought-out playlist of tunes that have remained popular throughout the years.
As the Internet becomes increasingly popular, online trademark infringement is becoming more common. As a result, traditional trademark protection methods have had to be adapted in order to take the unique characteristics of the online environment into consideration.
The Google AdWords service and keywords in general are a current hot topic in the internet domain. For many years consumers have found the Internet to be the best marketplace for all kinds of goods and services. In particular, search engines help consumers to locate products from particular brands among all those available in cyberspace.
According to research recently published by Maria de las Heras on www.elpais.com, around 30 million people in Mexico use the Internet, with each person spending an average of three and a half hours a week connected to the Web. Considering that Mexico has a population of approximately 106 million, this means that about 28% of Mexicans use the Internet.
The Internet provides new means for infringing registered rights. Such activities started with registration of domain names incorporating a trademark – widely known as cybersquatting (fortunately, there has been much progress in this field) and typosquatting – and evolving to trademark and copyright infringement through, among other things, keyword advertising, gripe sites and phishing scams.
Since the early 1990s the Internet has become incredibly popular; according to Netcraft research, as of October 1 2010 there were more than 232 million active websites. It is impossible to imagine life without the unlimited opportunities that it offers. However, people use the Internet for many different purposes, some of which may be against the law.
For many businesses, a high ranking on internet search engine results is vital in directing internet users to their websites. Google’s AdWords programme has proved a valuable tool for many businesses in attracting internet users to their websites. However, as a significant proportion of internet searches are conducted against terms that are trademarks, Google elected to include trademarks within its AdWords programme, allowing anyone to bid for another party’s mark for use as an AdWord.
Companies are discovering that their trademarks are being used in ways that could not have been imagined a few years ago. For example, companies can purchase and use a competitor’s trademark as a ‘keyword’, and then use these keywords to trigger internet advertising for their own products and services.
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