World Trademark Review Issue 30

April/May 2011

Talking point: chocolate animals and three-dimensional marks

The General Court has ruled on the registrability of three-dimensional trademarks in a number of decisions centred on chocolate animal shapes. WTR asks trademark practitioners for their reaction to the decision and the lessons to be learnt
Trevor Little

Features

Keeping all eyes open – the Burger King approach to trademarks

Cecelia Dempsey explains how the Burger King Corporation utilises all available resources to fight infringement – with franchisees playing a vital role
Trevor Little

Locating the missing link between trademarks and innovation Premium content

Innovation, the buzzword of the new economic models, is breaking out of the patent bubble as more and more people recognise its relationship with trademarks. WTR investigates
Adam Smith

The brand valuation minefield – avoiding the most common mistakes

For those seeking to value their brands, the industry offers a confusing array of methodologies. Take a wrong turn and the results can be significantly skewed
Gabriela Salinas

Under the hammer: are trademark auctions bane or boon?

Whether through bankruptcy proceedings due to recent economic conditions or companies identifying new business models, trademark auctions are more visible now than ever before. Yet there is much to consider before raising your hand to reserve those desirable trademarks
Robert BG Horowitz and Tarsha LT Luke

Follow the trail: a two-pronged approach to counterfeiting in China

Successfully tackling the availability of counterfeit goods in China requires that attention be paid both to the source of illicit products and to the venue in which they are being sold
James Luo

Cleaning up the streets – preventing the sale of counterfeits in the European Union

Despite efforts to stop counterfeit products at source, the sheer diversity of distribution channels makes it impossible to prevent illicit products being offered to consumers. Brand owners therefore need to be as creative and flexible as the foes they face
Richard Dissmann

Targeting purchasers and landlords in Thailand’s battle against counterfeiting

With the country on the Office of the US Trade Representative’s Priority Watch List, a new bill has been introduced to strengthen the anti-counterfeiting options available to trademark owners. Will it prove a game changer?
Nandana Indananda

Time for national offices to fight counterfeiting? In South Korea, it is already happening

In Europe, there has been debate about OHIM taking on an anti-counterfeiting enforcement role. In Korea, the Intellectual Property Office is one step ahead, having launched its own special judicial police squad
Mona A Lee

Street markets and trade fairs – practical investigation advice

The right approach to counterfeit investigations not only will increase effectiveness, but it can also generate brand protection profit
Duncan Mee

Many unhappy returns: watch out for fakes sneaking in through your back door

Brand owners carefully monitor markets to ensure that counterfeits are not reaching consumers, but are they doing enough to ensure that they are not themselves being supplied with counterfeit versions of their products?
Bob Boad

Are brand owners doing enough to help anti-counterfeiting efforts?

This year’s Global Congress on Counterfeiting and Piracy saw more than 900 anti-counterfeiting professionals descend on Paris. WTR presents the highlights of the programme, which saw calls for more engagement from the private sector
Trevor Little

Your $30 million licence to sue ICANN Premium content

As the controversial domain name expansion approaches, litigators are circling. WTR looks at the possible legal grounds for lawsuits against the policy and the $30 million fund designed to fight them
Adam Smith

Taking on the mob – protecting your social game with trade dress

Social game developers operate in a fast-moving, competitive marketplace, where traditional applications of trademark law may no longer provide comprehensive protection. However, recent disputes involving Mafia-themed games suggest that all is not lost
Emma D Enriquez, Ben Eilenberg and Theodore K Stream

Can I get a witness? Strategies for litigation success

Expert witnesses can make or break your litigation strategy. While expert evidence is an invaluable tool, mistakes made in the planning stage can prove extremely costly later
R Charles Henn, Jared S Welsh and Sabina A Vayner

Managing expert witnesses – going beyond the evidence

The successful use of expert witnesses does not rely solely on the nature of their evidence. Litigators would also be well advised to consider courtroom protocol and psychology
Mark Solon

News

INTA hits back at criticism of website relaunch

The International Trademark Association (INTA) has relaunched its website, introducing a refreshed mark accompanied by a new slogan, “Powerful network powerful brands”.

Brand owners snap up unsold marks

Although the first-ever public trademark auction may have failed to spark a bidding frenzy on the day, WTR has discovered that big brand owners have been privately buying up the unsold marks for six-figure sums.

gTLD programme delayed as trademark concerns continue

The expected March 2011 launch of the new gTLD programme was in doubt as WTR went to press, with Peter Dengate Thrush, chair of the Internet Corporation for Assigned Names and Numbers (ICANN), acknowledging that approval of the final applicant guidebook could be delayed.

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

Cutting through the confusion

A recent English High Court decision offers the prospect of new remedies based on confusion and passing off

Defining the metrics of success

The paradox at the heart of anticounterfeiting strategies is that success results in a drop in seizure numbers, making it harder to demonstrate the need for ongoing funding
Philip Brooks

How trademark holders can regain control over their brand in social media

Brand owners forced to police use of their logos online are justified in describing the burgeoning social network space as a major headache. But a new system which provides them with a set of proactive licence conditions could ease the pain for good
Danny Friedmann

Co-published editorialCountry Correspondents

Trademark registration and prosecution strategies

Canada - Bereskin & Parr LLP

Applications for registration of words or logos may include multiple filing bases, including use, proposed use and use and registration abroad. If an application is filed based on proposed use, the applicant will ultimately need to file a declaration of use attesting to use of the mark in Canada before the application will proceed to registration.

China - Kangxin Partners PC

As the Chinese language is fundamentally different from Latin language, businesses planning to tackle the Chinese market must have a Chinese version of their trademarks. One question that must be dealt with before filing a trademark application is how to select the appropriate Chinese equivalent of the original trademark.

Germany - Siebeke Lange Wilbert

Applicants applying for trademark protection in Germany are likely to perceive the German Patent and Trademarks Office (GPTO) as an accessible institution which takes a reasonably cooperative approach to the registration process. For example, wherever possible, applicants will be informed of any objections that the GPTO may have at an early stage in the proceedings, so that they can clarify uncertainties or submit observations to defend the application.

Italy - Bugnion SpA

The Italian Patent and Trademark Office can hardly count itself among the world’s most efficient industrial property offices. However, recent developments show that it is taking steps in the right direction. This is partly due to efforts made by the Italian legislature which, since 2005, has introduced a number of measures aimed at reorganising the IP system, particularly in regard to the trademark system.

Mexico - Uhthoff, Gomez Vega & Uhthoff, SC

The Mexican Institute of Industrial Property can often be subjective in its interpretation of the law, making it crucial for applicants to approach the authority to discuss any areas of uncertainty. This can result in significant savings.

Poland - Patpol - Patent & Trademark Attorneys

Brand owners should note that the enforcement of rights before the Polish courts is more effective if a trademark owner enjoys protection under the national system.

Russia - Gorodissky & Partners

In Russia, in order to file a trademark application, it is not necessary to submit material proving use of the mark or even intention to use. However, before filing a trademark application, certain general points should be taken into account in order to ensure that proper protection for the trademark is obtained.

Germany - Edwards Angell Palmer & Dodge

In the United Kingdom, trademark rights are protected in two ways – by statute through an action for trademark infringement and by common law by means of a ‘passing off’ action. In order to obtain statutory protection, a trademark must be registered.

United States - Edwards Angell Palmer & Dodge

In the United States, practitioners should be wary of a host of issues before filing a trademark application. As a baseline, in order to anticipate and head off problems during prosecution, it is prudent initially to conduct a full trademark search.

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