World Trademark Review Issue 30 April/May 2011
Cecelia Dempsey explains how the Burger King
Corporation utilises all available resources to fight
infringement – with franchisees playing a vital role
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
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
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
Robert BG Horowitz and Tarsha LT Luke
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
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
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?
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
The right approach to counterfeit investigations
not only will increase effectiveness, but it can also
generate brand protection profit
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?
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
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
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
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
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
The International Trademark Association (INTA) has relaunched its website, introducing a refreshed mark accompanied by a new slogan, “Powerful network powerful brands”.
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.
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.
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.
A recent English High Court decision offers the prospect of new remedies based on confusion and passing off
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
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
Co-published editorialCountry Correspondents
Trademark registration and prosecution strategies
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.
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.
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.
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.
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.
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.
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.
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.
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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