World Trademark Review Issue 35

February/March 2012

Inside track: Lessons in outsourcing

Although Arla Foods’ IP function has been effectively outsourced, it still requires strong strategic management from within the dairy cooperative – a task which falls to Jakob Balling. The structure employed offers valuable lessons for those wrestling with the question of whether – and how – to outsource trademark work
Trevor Little

Features

Talking point: Industry developments 2011-2012

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
Trevor Little

Trademark Toolkit: enforcement and reputation

Industry experts give practical advice on how to approach enforcement in a way that minimises public criticism or accusations of bullying
Trevor Little

The world’s leading trademark firms and practitioners revealed Premium content

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

Reducing expense the right way – best practice in alternative dispute resolution

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
Eleni Lappa

Master brand or multiplicity? Choosing a branding approach

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

Local lessons – the brand experience in China

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
Martin Roll

A special campaign – how efforts to protect China’s knowledge economy will benefit trademark owners

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

Beyond China: the counterfeiting challenge in Southeast Asia

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
Helen Sloan

Investigating the investigators

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
Jack Ellis

Getting your sub-licensing strategy right

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

When bad things happen to good brands

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

Congratulations – you’re a winner! Unless you infringed someone’s IP rights...

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

News

ECJ’s goods in transit blow to brand owners

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.

Canadian government urged to empower Customs

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.

Australia passes controversial legislation; brand owners fight back

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.

IP TRANSLATOR: OHIM’s class heading approach is wrong

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.

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

Counterfeiting perspectives

Legislation targets theft of US property by rogue websites
James L Bikoff, David K Heasley and Phillip V Marano

Trademark management

After PepsiCo – are we any closer to harmonisation of design rights?
David A Stone

Registration issues

Keep calm or get litigious?
Chris McLeod and Imogen McCarthy

Co-published editorialCountry Correspondents

Well-known and famous marks

Canada - Bereskin & Parr LLP

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

China - Kangxin Partners PC

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 - Siebeke Lange Wilbert

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

India - Ranjan Narula Associates

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

Italy - Bugnion SpA

Given existing jurisprudence, the protection offered to trademarks with a reputation is unquestionably high in Italy

Mexico - Uhthoff, Gómez Vega & Uhthoff SC

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

Poland - Patpol - Patent & Trademark Attorneys

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

Romania - Vilau & Mitel

While protection for well-known marks is in place, there are some contradictions in the treatment of fame

Russia - Gorodissky & Partners

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

United Kingdom - Edwards Wildman Palmer LLP

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

United States - Edwards Wildman Palmer LLP

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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