World Trademark Review Issue 33 October/November 2011
Upon joining Tata Technologies, Anubhav Kapoor
faced the challenge of establishing an IP function at
a new company while also protecting and steering a
well-known global trademark. He explains how the
company is finding its feet in the IP sphere
The power of the Internet as a resource is limited only
by knowledge of how to use it, so WTR has pulled
together 10 of the most useful online tools to help
trademark counsel work smarter and faster
It has been a hectic year in Alicante. While continuing its core
activities, OHIM came under new leadership, commenced
internal restructuring and found itself at the heart of debate
on the future of the European trademark system. In this article
WTR identifies the top filers and canvasses opinion on OHIM’s
performance and the big issues of the day
WTR considers the hot trademark issues arising from
next year’s Olympics, with input from industry,
officials and even the organising committee’s brand
protection lawyer herself
While the stratospheric rise of apps has increased the
burden on trademark counsel, the creation of a
policing strategy is not as burdensome as it seems
John Sullivan and Michael Leonard
Fighting cybersquatting in China is getting easier, but
international companies should lay the foundations
now, rather than waiting until they are conducting
business in the country
He Jing and Nathan Jackson
Just when you thought the keywords issue was
diminishing, advertisers are now targeting online ads
based on behaviour. Is this a new chapter in the battle
between trademarks and keywords?
Jonathan E Moskin
While existing social media strategies can be applied
to Twitter, it would be a mistake to ignore the
particular ways that the information network is used
by both the public and infringers
Scott Gelin and Seth Kertzer
Many industries tend to use a limited number of
colours for their trademarks and logos. While there
can be distinct reasons for this, the question brand
owners need to ask themselves is whether the
benefits of breaking away from the crowd outweigh
those of conforming
There has been fierce debate over the PROTECT IP Act,
currently stalled in the Senate. However, with
infringement continuing, the arguments for and
against the act need to be fully weighed
James L Bikoff, David K Heasley and Phillip V Marano
The European Commission’s blueprint for IP rights is
not itself a major step forward, but should the digital
world’s major players be mobilised to support future
developments, it could herald a positive new
framework for IP rights protection
Tobias Malte Muller
The Supreme Court of Canada has taken considerable
interest in trademark issues over the past five years,
with the latest decision expected to have a significant
impact on the use of expert evidence in trademark
Robert A Macdonald and Michael O’Neill
Online marketplace operators can, in certain circumstances, be held liable for counterfeit goods sold through its platforms, the European Court of Justice (ECJ) has ruled.
The International Trademark Association (INTA) and a lobby of law professors including Creative Commons co-founder Lawrence Lessig have locked horns over the proposed PROTECT IP Act, currently before US Congress.
Brand owners are being given an extra 20 days to opt into the ICM Registry Sunrise B trademark protection programme for the ‘.xxx’ toplevel domain (TLD). Originally scheduled to last for 30 days, the sunrise will now run for a total of 50 days from September 7, finishing on October 28.
The European postal service is becoming an increasingly popular channel for counterfeit goods, according to statistics released by EU Customs. Last year the agency seized 48,000 counterfeit goods as they passed through the postal system – more than three times the number seized in 2009.
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.
As the exchange of fan art becomes easier,
trademark owners are faced with a
dilemma: should they take the same
enforcement strategy with their
customers as they do with wilful
With addressing every instance of online
infringement an impossible task, Electronic
Arts has forged a three-pronged approach
to online monitoring
Proposed amendments to Taiwan’s
Trademark Act align the law with
international regimes, yet more
controversial practices remain unaddressed
Co-published editorialCountry Correspondents
In Canada, the brand name for a prescription drug must be selected bearing in mind not only trademark registration issues pursuant to the Trademarks Act and within the domain of the Canadian Trademarks Office, but also regulatory matters handled by the Therapeutic Products Directorate of Health Canada.
As in most other jurisdictions, in China pharmaceutical companies must navigate a dual system for registration and approval of their trademarks and the commercial names of their products.
During the last two years, the German courts have decided a number of cases involving pharmaceuticals and medical devices. However, the courts have often reached contrasting conclusions.
To safeguard consumers, it is necessary to have clear, simplified and consistent parameters for the comparison of marks, while avoiding the stifling of competition
With new opposition proceedings finally in force in Italy, it is expected that the Italian Patent and Trademark Office will also finalise its practice with regard to pharmaceutical trademarks. To this end, the latest rulings of the Italian courts on pharmaceutical trademarks should be examined.
Brand owners need to be aware of a number of restrictions when seeking to register pharmaceutical trademarks
The EU regime casts a heavy shadow over the UK pharmaceutical practice
Pharmaceutical trademark clearance is a complex process. A successful pharmaceutical trademark passes marketing muster only by resonating with relevant consumers and conveying the right brand message. It must also be available for use and registration on a global basis, and must survive regulatory scrutiny not only in the United States, but also in several foreign jurisdictions.
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