World Trademark Review Issue 35 February/March 2012
WTR asked a range of trademark professionals, industry representatives and legal specialists to highlight the issues that they felt were most significant in 2011, either in their respective jurisdiction or internationally, and what they anticipate will be the major developments in 2012
Industry experts give practical advice on how to approach enforcement in a way that minimises public criticism or accusations of bullying
The forthcoming World Trademark Review 1000 ranks
the world’s leading law and trademark attorney firms and individuals. In this exclusive preview, we identify the firms with the highest number of rankings by jurisdiction and by individual practitioner, revealing the leaders in global trademark practice
Alastair Mitchell and Lori Frecker
In cost-conscious times, alternative dispute resolution (ADR) is an attractive option for resolving conflict. However, ADR is not a cost-free solution and needs to be carefully incorporated into current legal practice
Building a brand is expensive, and involves the creation of identity and a related language that services will carry with them. The decision as to whether to adopt a master brand or a portfolio brand approach is therefore a critical one, and a number of factors need to be considered
Sasha Strauss and David Radcliff
A number of challenges remain when doing business in China, but steps can be tak en to enhance the country brand. Crucially, local engagement lies at the heart of anti-counterfeiting success
The State Council’s Special Campaign against IP infringement has had demonstrable success and, while the rationale behind it is to protect Chinese-owned intellectual property, the benefits will be felt by all
George Chan and Dominic Edmondson
While China may remain the biggest culprit, it is not the only Southeast Asian jurisdiction in which counterfeiting is a major issue. Yet despite challenges on the ground, there is much that brand owners can do in the region in order to successfully tackle the problem
Many brand owners are turning to external corporate investigators in order to follow the tracks of increasingly shrewd and elusive counterfeiters. Hiring an investigator can be a very effective part of an anticounterfeiting strategy and
need not cost the earth–so long as the brand owner knows what to look for
One of the main reasons for allo wing sub-licensing is to maximise the revenue generated under a trademark, but licensors have to ensure that they receive a share of the benefit. This is just one of the considerations that need to be tackled in licensing agreements
Jeremy Dickerson and Elizabeth Griffiths
Negative associations through media use of your trademarks can prove difficult to counter, and action can lead to more headlines
Leonard Glickman and Brie Lastman
While sweepstakes provide an eff ective marketing tool, in the United States a careful balance has to be struck between state and federal lottery laws, and the use of third-party I P rights.
Lisa Marie Martens and Jay Newman
In Nokia and Philips (Joined Cases C‑446/09 and C‑495/09), the Court of Justice of the European Union (ECJ) has specified the conditions under which goods in transit can be seized by European customs authorities. Although the decision expanded on the circumstances in which temporary detention is permissible, it still places a heavy burden on brand owners.
The Canadian Anticounterfeiting Network has released an executive update to its Report on Counterfeiting and Piracy in Canada: A Road Map for Change, calling on the government to get tougher on IP crime.
The Australian government has approved the country’s Plain Packaging Bill, meaning that tobacco products will be sold in generic packaging from December 2012. The move has sparked anger among brand associations, with tobacco companies heading to the courts to continue the fight.
In Chartered Institute of Patent Attorneys v Registrar of Trademarks (Case C-307/10), Advocate General Both as stated that Office for Harmonisation in the Internal Market (OHIM) Presidential Communication 4/03, which supports the ‘classheading-covers-all’ approach to registration, does not offer sufficient clarity.
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.
Legislation targets theft of US property by rogue websites
James L Bikoff, David K Heasley and Phillip V Marano
After PepsiCo – are we any closer to harmonisation of design rights?
David A Stone
Keep calm or get litigious?
Chris McLeod and Imogen McCarthy
Co-published editorialCountry Correspondents
Well-known and famous marks
Canada requires a case-by-case determination of fame within the context of an infringement proceeding or opposition. Where fame is established, relief is available
While the draft third amendments to the Trademark Law – which are likely to impact on the treatment of wellknown marks – are being reviewed, practitioners should follow existing practice
Germany has long evaluated the scope of protection for well-known and famous marks, with jurisprudence characterised by a steady enhancement and strengthening of protecti on
The growth of India’s middle-class population has increased demand for branded goods. As a result, provisions on well-known marks have been developed to protect not the interests only of brand owners, but also of the general public
Given existing jurisprudence, the protection offered to trademarks with a reputation is unquestionably high in Italy
Obtaining a declaration of fame provides the trademark holder with the certainty that the Mexican authorities will not register an identical or confusingly similar trademark for similar goods and services
Evidencing renown in Poland is not always an easy task, but preparation of the right evidentiary materials goes a long way towards achieving protection for trademarks which have been built up over time
While protection for well-known marks is in place, there are some contradictions in the treatment of fame
There is a growing interest in establishing the fame of a mark in Russia, but brand owners need to ensure that they comply with established processes
In the United Kingdom, the question of reputation is significant for trademark owners. The ability to accumulate evidence of a mark’s reputation will significantly extend the proprietor’s exclusivity in its mark, negating the requirement to demonstrate directly a likelihood of confusion
US law does not recognise a separate doctrine or category of ‘famous marks’, but owners of well-known marks do receive important, strategic benefits in the United States
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