World Trademark Review Issue 29

February/March 2011

The business of intellectual property

At the Foster’s Group, intellectual property is embedded into the corporate DNA. For IP director Owen Malone, this approach reflects the global trend towards recognising the commercial role that intellectual property plays
Trevor Little

Features

Talking point: industry predictions 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
Trevor Little

When is a zombie not a zombie? Capitalising on brand heritage

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
Diane Prange

The real zombies exist solely on the books

Brands that are not used but kept alive in company books are not dead – they are wasted money-making opportunities
David Ruder

Resurrecting abandoned trademarks – a question of perception

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
Laurence R Hefter and Danny M Awdeh

Brand valuation post-ISO 10668: from the jungle to the Garden of Eden?

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 valuation techniques?
Maria Gabriela Salinas Fabbri

The trademark triangle: the tension between owners, firms and service providers

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 may unfold
Adam Smith

Cyber spiders: an anti-counterfeiting technique with legs Premium content

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?
Adam Smith

Tuning in to the dangers – protecting television formats

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
Leonard Glickman

A top-down approach: creating a resilient IDN strategy Premium content

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 secondary levels
Bruce Tonkin

The first Cyrillic TLD: when the best-laid plans go awry

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
Sergey Gorbunov

Reducing risk – international perspectives on survey evidence

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

Protecting your brand in the social media space

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

Identifying the world’s leading trademark firms and practitioners

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
Alastair Mitchell

Career opportunities – transitioning from in-house to private practice

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
Trevor Little

News

OHIM president outlines bold anti-counterfeiting plans

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.

Associations voice concern over ‘forgotten’ trademarks

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.

ICANN bows to government pressure regarding new gTLD concerns

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.

SEPAF expels Albihns.Zacco

Albihns.Zacco AB has been expelled from the Association of Swedish Intellectual Property Law Firms (SEPAF) for breach of the organisation’s ethical rules.

Global View

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.

Columns

Time for trademark counsel to get their heads into the cloud

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

Ending the ‘whack-a-mole’ problem?

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 online counterfeiters
Harley I Lewin

Time for a social network trademark dispute policy?

Just when trademark lawyers thought that they had domain names under control, here come social network usernames. Is the trademark industry prepared?
Thomas Barrett

Co-published editorialCountry Correspondents

Internet issues (other than domain names)

Canada - Bereskin & Parr LLP

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.

China - Kangxin Partners PC

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.

Israel - Luzzatto & Luzzatto Patent Attorneys

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.

Italy - Bugnion SpA

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.

Mexico - Uhthoff Gómez Vega & Uhthoff SC

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.

Romania - Vilau & Mitel

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.

Russia - Gorodissky & Partners

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.

United Kingdom - Edwards Angell Palmer & Dodge

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.

United States - Edwards Angell Palmer & Dodge

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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