World Trademark Review Issue 37 June/ July 2012
The second edition of the WTR 1000 builds on the success of the first, identifying the world’s leading trademark legal services providers. In the first of a regular column, the research team identifies key regional trends and presents a selection of the rankings available in the publication
This year’s shortlist for the WTR Industry Awards spans
the whole spectrum of trademark-related activity. The
chief quality that nominees share is the ability to predict and react to the latest industry challenges
Technology brands dominate the top 10 list of the world’s most valuable brands, and offer some unique insights into how trademarks and brands can be used to increase corporate value
Since its launch in 2009, the Global Trademark Benchmarking Survey has revealed the brutal effects of the global economic downturn for trademark teams and counsel. This year, there are tentative signs of a rebound. But is all as it seems?
In 2009, WTR presented an assessment of the franchise model and predictions of how it would fare during the recession. Three years on, the authors revisit the market, consider ing how their predictions fared and what has been learnt about the franchising business
David W Koch and Darrell M Johnson
A number of trademark decisions were issued in 2011,
illustrating the difficulties in dealing with bad-faith trademark filings
Jingbing Li and He Jing
During 2011 a number of cases shed light on the interpretation and scope of the statutory protection scheme for well-known marks in Singapore
Last year was a busy one for the Court of Justice of the
European Union, with online intermediary liability, the use of advertising keywords and the role of customs author
ities in relation to counterfeit goods in transit high on its trademark agenda
Mark Holah, Allan Poulter and Rebecca Pakenham-Walsh
It was a busy year in the South African courts, with a number of decisions worth noting for their case law contribution
Decisions issued in 2011 indicate that the Brazilian judiciary tends to accept comparative advertising as a way of ensuring free competition for all market players, provided that certain conditions are met
Fernando Eid Philipp, João Cunha and Pedro Henrique Dias Batista
Issues surrounding the use of trademarks online featured prominently in 2011’s US case law
Scott J Slavick
On May 26 2011 the Supreme Court of Canada released its decision in Masterpiece Inc v Alavida Lifestyles Inc (2011 SCC 27) and, in so doing, clarified important legal principles concerning the interrelationship in Canada between common law trademark rights and those rights which flow from registration. Prior to this decision, very little jurisprudence had dealt with the differences, overlaps and
interrelationships between rights flowing from registration and those existing at common law through use.
Mascots offer a unique opportunity to create a brand
personality. They also require a close relationship with
the marketing department, as well as a careful approach to trademark law
Purvi J Patel
Television, film and online programme producers are offering increased opportunities to position products in their content. However, the practice of product placement is not without legal risk, requiring careful contractual drafting
Gregory Gulia and Terry Parker
While trademark counsel are finding it increasingly hard to clear new product names, the challenge will only grow as marketers seek to create new brands, at new tier levels and in new categories, to meet consumers’ desire for choice
As WTR went to press, ICANN had not yet revealed the list of first-round generic top-level domain applications. However, with the window now closed, it is useful to look back at the application process, costs and driving factors – as well as the objections and dispute resolution processes in place for nonapplicants, and the defensive strategies available
In Celaya Emparanza y Galdos Internacional SA v Proyectos Integrales de Balizamiento SL (Case C- 488/10), a reference for a preliminary ruling by a Spanish court, the Court of Justice of the European Union (ECJ) has clarified the scope and effect of Article 19(1) of the Community Design Regulation (6/2002) in court proceedings brought by the holder of a registered Community design (RCD) against the holder of a later RCD.
The Canadian Intellectual Property Office (CIPO) has announced that it is now accepting applications to register sound marks. With a consultation period on the country’s Trademark Regulations ending on April 23, there could soon be further changes to the treatment of non-traditional marks.
With a number of EU countries reviewing their position on the Anti-counterfeiting Trade Agreement (ACTA), the act is to be referred to the ECJ to assess whether it is compatible with the European Union’s fundamental rights and freedoms.
The US Department of Commerce has issued a report identifying the sectors that generate intellectual property and the impact of those sectors on the US economy. At a time when the debate over IP rights rages on, the study sheds light on the contribution of intellectual property to economic performance – with trademarks playing a central role.
In Helena Rubinstein SNC v OHIM (Case C-100/11 P), Advocate General Mengozzi has confirmed the General Court’s finding that the marks BOTOLIST and BOTOCYL would take advantage of the distinctiveness and reputation of the earlier BOTOX marks.
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
The dispute between Apple and Proview over the IPAD mark was ongoing as WTR went to press. However, it offers some important learnings for brand owners.
Could Canada’s sound decision lead to a new approach on non-traditional marks? The Canadian Intellectual Property Office (CIPO) has long struggled with concepts related to registrations for non-traditional trademarks.
Shane Hardy and Brie Lastman
When poking fun at a rival becomes infringement – lessons from the Specsavers/Asda dispute
Co-published editorialCountry Correspondents
Domain name management
Important changes to ‘.ca’ dispute resolution policy make it more accessible to trademark owners
Faced with a range of domain name variations, brand owners doing business in China need to carefully consider their selection methodology
In the ever-expanding online world, brand owners need to be ready to fight infringement at the top and second levels
In addition to a clear ‘.in’ Domain Dispute Resolution Policy, the courts have laid down some consistent guidelines for the treatment of domain name disputes
In creating a domain name strategy, brand owners need to ensure they are taking a national and international perspective
With the advent of new gTLDS, brand owners need to create a multi-faceted domain name management strategy
While the Romanian Top-Level Domain Authority oversees the country’s domains, brand owners should consider whether to utilise its dispute resolution procedures or utilise other methods
A range of national domains are available in Russia, with disputes between IP owners and domain name administrators played out in the courts
The United Kingdom is one of the most cost-effective jurisdictions in which to deal with domain name abuses
Preparing for the impact of new gTLDs on domain name management in the United States
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