World Trademark Review Issue 32 August/September 2011
The Quality Brands Protection Committee is leading
the charge in the battle against counterfeiters in
China. Chairman Jack Chang discusses the group’s
successes, challenges and plans for the future
As exclusive USPTO data reveals the ascent of new
business models for trademark filing services, WTR
examines the challenge posed by new market entrants
and why they are causing a stir
On May 17 2011, WTR announced the winners of its fifth Industry Awards at an exclusive ceremony in San Francisco’s Asian Art Museum. The awards are designed to recognise the vital work carried out by in-house trademark counsel, and identify the teams and individuals that are performing their functions to the highest possible standards. Over the following pages we speak to the winners and explain why they were judged to be leading examples of industry best practice.
WTR looks back on the key learnings from this year’s
International Trademark Association annual meeting,
held in San Francisco
Lise Charles, Adam Smith, Trevor Little and Helen Sloan
In addition to identifying those vendors offering
enterprise trademark management systems, new
research offers invaluable advice for selecting the right
trademark software and systems for your organisation
Tove Graulund and Ralph Schroeder
While there are many successful examples of brand
truncation, for both marketing professionals and
trademark counsel the decision to create alternative
faces for existing marks is one that should be
Stephen R Baird
A US district court in Washington state has called into
question the long-accepted rule of domicile and has
shifted the debate over the right of publicity
Robert C Cumbow
While celebrity endorsements can boost a brand, they
can also result in negative publicity and tarnish
reputations. To minimise risk to brand identity,
contracts should cater for every eventuality
James B Astrachan
The Falsified Medicines Directive, the Medicrime
Convention and the Anti-counterfeiting Trade
Agreement are set to strengthen the position of
pharmaceutical trademark owners – just as the issue
of goods in transit looks set to create new challenges
Manon Rieger Jansen and Matthijs Marell
New proposals on electronic service of process on fictitious and anonymous websites have come
under scrutiny, but offer an important tool to fight
New generic top-level domains are here, but what
brand considerations come into play when deciding
whether to apply for a proprietary gTLD and what
should you take from your existing protection and
Flip Petillion and Bart Lieben
The Office for Harmonisation in the Internal Market (OHIM) has unveiled a new organisational structure. Following an extensive consultation period, OHIM’s new strategic plan sets out three overall objectives: to build a strong, vibrant organisation; to improve quality and optimise the timeline of operations; and to promote convergence of practice. To achieve this, six lines of action have been identified, including the establishment of the I P Academy and knowledge repository, the improvement and broadening of quality, and the development of the European network.
The Supreme Court of Canada has clarified that trademark rights acquired through use in one geographic area of the country may be relied upon to prevent the registration of a later similar trademark, even if the later mark is used in a different part of the coun try.
The Court of Justice of the European Union (ECJ) has clarified the territorial scope of injunctions and the coercive measures used to enforce such injunctions for infringement a Community trademark (CTstating that “the scope of the prohibition against further infringement or threatened infringement of a Community trademark, issued by a Community trademark court… extends, as a rule, to the en tire area of the European Union”.
The Internet Corporation for Assigned Names and Numbers (ICANN) has published a report proposing that a full-scale review of the Uniform Dispute Resolution Policy (UDRP) is not recommended.
The US Patent and Trademark Office (USPTO) has released the results of its ‘trademark bullies study’, which stemmed from growing concerns that small businesses are unfairly disadvantaged in trademark disputes. Following its publication, the study has faced fierce criticism from the trademark attorney community
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.
When Heather Steinmeyer joined WellPoint
Inc, she was tasked with building and
implementing a resilient IP programme
across the organisation – a process in which
the brand strategy team was key
For Links of London, linking its social
media and anti-counterfeiting strategies
pays tangible dividends
Social media sites purporting to offer
protection for trademarks, patents and
copyrights, in the form of ideas, will
negatively shape public perception of IP rights
Co-published editorialCountry Correspondents
Proposed practice rules, if implemented, could pave the way for the registrability of sound and colour marks
While colour combination and three-dimensional trademarks are still relatively new to China, there remain great uncertainties about their protection
A trademark’s principal function is to distinguish the products of one entity from those of another. In order for a sign to serve this purpose, it must be perceived by the public as a sign of origin and not as a mere description, general statement or advertisement.
Non-conventional marks are slowly gaining acceptance in India. However, trademark laws and procedures are still evolving, making it important to keep abreast of the latest developments
According to the law on traditional trademarks, words, logos and wording in special characters enable consumers to distinguish sources of goods and services. However, what about particular colours and sounds that have the ability to identify goods and services belonging to a particular business source?
In order to make a product or service more attractive or distinguishable, non-traditional marks are often used in modern marketing strategies. However, such use may result in a lack of adequate protection in some jurisdictions. Now that business is conducted on a global scale due to technological advances such as the Internet, manufacturers and service providers face pressure not only from the competition, but also because consumers are more demanding of new characteristic elements when deciding what to buy.
The Trademark Law 1998 (significantly amended in 2010) follows the principles of the EU First Trademarks Directive (89/104/EEC). Thus, in Romania, a ‘trademark’ is defined as any sign that is capable of being represented graphically and distinguishing the products of one entity from those of others.
The Russian regime does not set down separate regulations to govern applications for non-traditional trademarks, although moves are afoot to improve the legislation
Sophisticated businesses rely on more than simple words and logos to identify their products and services. Unique product and packaging shapes, slogans, colours, jingles, endorsement by personalities and even smells can be used by businesses to identify their products or services.
The US system for protection and registration of non-traditional trademarks is liberal and pragmatic. Practitioners should consider its flexibility and broad protection. Rights holders can confidently embrace non-traditional trademarks in their overall IP strategy for the US market.
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