World Trademark Review Issue 36

April/ May 2012

Inside Track: Language lessons – the Xerox experience

Fighting off the risk of genericide is just one challenge that faces successful brands. Margaret Williams Walker, associate general IP counsel at Xerox Corporation, explains the company’s approach to IP enforcement and how it has strived to ensure proper use of the XEROX mark
Trevor Little

Features

Trademark Toolkit: Lookalike packaging

Lookalikes have become increasingly topical in recent months, with MARQUES raising the issue before the European Parliament, Hogan Lovells publishing a report on parasitic copying and research underway at the UKIPO. WTR asked a range of trademark experts for their view on the issue and advice on how to tackle it
Trevor Little

Building a solid foundation – practical strategies for trademark department optimisation

Drawing on 17 years’ in-house experience at Sun Microsystems and Intel, Anne Gundelfinger explains how to effectively build, manage and optimise the inhouse trademark function
Anne Gundelfinger

With a little help from our friends - working with external counsel to raise corporate profile

As resources are stretched to the limit and budgets are frozen, it has never been tougher for the trademark function to get their voices heard. In this environment, outside counsel can play a pivotal role in helping to enhance their in-house colleagues’ internal visibility
Jack Ellis

Time to review – achieving best practice in trademark audits

Trademark audits should be regularly performed to ensure there are no deficiencies in current protection programmes. However, if crucial steps are missed, unidentified chinks in the armour may come back to haunt you
Susan M Natland and Brigette Chaput

Time for a healthcheck – the anatomy of a strategic brand audit

While trademark audits allow an assessment of the legal protection afforded to marks, strategic brand audits allow a 360-degree view of relevance and perception – affording an insight into future brand challenges
Thomson Dawson

Franchising and intellectual property: the inseparable disciplines

Against the backdrop of a rapidly developing body of law affecting the overlap between intellectual property and franchising, one of the key internal partners for trademark counsel should be their franchising lawyer colleagues
Philip F Zeidman and Mark I Feldman

Winning in China – why brand owners should not fear courtroom battles Premium content

Statistical analysis shows that, contrary to conventional wisdom, the Chinese courts can be a highly effective forum to tackle trademark infringement. The key is to let the available data inform your strategy
Helen Sloan

The top Chinese filers Premium content

Many foreign trademark owners come a cropper at the registration stage, although this is easily avoided. “When it comes to trademark registration, it is first to file - it is very simple,” explains Horace Lam, a Beijing-based partner at Jones Day.
Helen Sloan

The ASEAN Economic Community: good news for trademark owners?

Trademark owners would be well advised to prepare now for 2015’s ASEAN Economic Community. While the development creates a number of opportunities for brand owners, there is also a need to ensure that IP protection is in place prior to harmonisation
Siraprah Rungpry and Oliver Knox

Is there life for IP owners after Nokia and Philips?

While the ECJ’s decision in the joined Nokia and Philips cases initially seems a blow to trademark owners, there are positive aspects
Willem Leppink and Timme Geerlof

Adapting to a new reality

While use of the technology is not yet widespread, augmented reality is increasingly being used by savvy brand owners – requiring an equally savvy analysis of the IP-related issues surrounding the medium
James G Gatto and Jenna F Leavitt

Realising brand value in insolvency scenarios

Brands have the potential to live long, profitable lives and, in the case of corporate failures, brand value can be a critical asset for facilitating business revival. However, care must be taken in the valuation of brands and intangible assets in the context of an insolvency scenario
Stuart Whitwell

News

Online protest spills into the real world, derailing anti-piracy legislation

A series of online protests has stalled the progress of anticounterfeiting legislation in the United States, with public demonstrations in Europe threatening to have the same impact on the Anticounterfeiting Trade Agreement (ACTA) across the Atlantic.

Obama steps up anti-counterfeiting efforts

President Obama has placed the fight against counterfeit goods firmly on the administration’s political agenda, using his State of the Union address to outline plans for a trade enforcement unit.

gTLD application window opens as concern centres on second-level infringemen

The generic top-level domain (gTLD) application window opened on January 12 2012, with the trademark community’s focus turning to the protection mechanisms at the second level.

ECJ provides clarification on trademark use in Red Bull dispute

The Court of Justice of the European Union (ECJ) has held that the filling of cans that already bear a sign similar to a trademark does not constitute use of that sign in a way that can be prohibited by the trademark owner.

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

Trademark management

‘Means what it says’ versus ‘class headings cover all’
Hiroshi Sheraton and Anna Jones

Counterfeiting perspectives

Legislating for change in Canada
Lorne M Lipkus and Georgina Starkman Danzig

Registration issues

Time for change? Tackling the problem of proprietorship
Jude Antony

Co-published editorialCountry Correspondents

Anti-counterfeiting

Canada - Bereskin & Parr LLP

In Canada, there is generally no customs enforcement of IP rights and customs officials have traditionally seen their role as simply collecting the relevant duties. However, options are available to stem the flow of counterfeits

China - Kangxin Partners PC

In China, brand owners can draw on a range of enforcement options to fight against counterfeiting – both in the physical world and online

India - Ranjan Narula Associates

While more could be done, India has a robust legal framework for combating counterfeiting and piracy. For brand owners, the key is creating a carefully thought-out strategy to operate within this framework

Italy - Bugnion SpA

The tools being implemented by Italian Customs are having a significant impact, both in fighting piracy and in public administration relations

Mexico - Uhthoff, Gómez Vega & Uhthoff SC

It is important that rights holders demonstrate their commitment to working with Customs, in a bid to maximise the effectiveness of the rights protection mechanisms at their disposal

Romania - Vilau & Mitel

Specialist IP panels have been created in Bucharest and have developed solid case law, as they have exclusive jurisdiction over all trademark cancellation and revocation cases. Choosing the right forum can therefore be crucial

Russia - Gorodissky & Partners

Russian law enforcement has stepped up its efforts to fight counterfeiting over the past few years, with trademark owners able to draw on a range of enforcement options

United Kingdom - Edwards Wildman Palmer LLP

In the United Kingdom, a prompt and streamlined procedure is necessary to ensure that counterfeit goods can be efficiently destroyed while complying with the existing regime

United States - Edwards Wildman Palmer LLP

There are a number of tools available for curbing the availability of counterfeit goods, with the International Trade Commission and US Customs and Border Protection key allies in the fight

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