World Trademark Review Issue 38 August/ September 2012
New laws are drafted and crucial decisions made far away from the offices of trademark practitioners. So how can counsel ensure that their voices are heard in the corridors of power?
On May 8 2012, WTR announced the winners of its sixth Industry Awards at an exclusive ceremony in Washington DC’s National Museum of Women in the Arts. The awards are designed to recognise the vital work carried out by in-house trademark counsel, and identify the teams and individuals that are performing their functions to the highest possible standards. Over the following pages we speak to the winners and explain why they were judged to be leading examples of industry best practice.
WTR looks back on the key learnings from this year’s
International Trademark Association annual meeting,
held in Washington DC
Joff Wild, Lise Charles, Trevor Little and Jack Ellis
It is difficult to know how best to reach out to the public on counterfeiting: apathy and scepticism seem to be growing, yet educational initiatives can appear a luxury in the current economic climate. But consumer engagement can be critical to an effective anticounterfeiting strategy
With the gTLD application process back on track after a
system glitch, and the applied for strings now known, counsel need to ensure that they are familiar with the immediate trademark protection mechanisms available to protect brands
Jeffrey H Kaufman and Kyoko Imai
An internal trademark policy provides an ideal opportunity to create a wider business understanding of IP issues, allowing for more effective dialogues with internal stakeholders. For those organisations seeking to construct a policy, it is important that the opportunity is not wasted
WTR has previously investigated the issue of trademark greenwashing. For those companies aiming to truly incorporate sustainability into their corporate brand identity, an important aspect to consider is internal branding – an activity that requires a multistakeholder approach
While many trademark counsel are alive to the danger
of trademark filing scams, increasing numbers of companies are paying invoices in the mistaken belief that such payment is necessary to maintain their trademark applications or registrations. While industry is moving to address this problem, it is important to ensure that all internal stakeholders are able to identify misleading solicitations
Under the EU customs regime, rights holders can have counterfeit goods confiscated at the borders. However, it is questionable whether the regime adequately considers the rights of alleged infringers
Almost one and a half months later than originally planned, the Internet Corporation for Assigned Names and Numbers (ICANN) has revealed the first batch of applications for new generic toplevel domains (gTLDs) at a press conference held in London.
As WTR went to press, the Court of Justice of the European Union (ECJ) issued its decision in Chartered Institute of Patent Attorneys v Registrar of Trademarks (Case C-307/10), often referred to as the IP TRANSLATOR case.
In Chocoladefabriken Lindt & Sprüngli AG v Office for Harmonisation in the Internal Market (OHIM) (Case C-98/11 P, May 24 2012), the Court of Justice of the European Union (ECJ) has put an end to Lindt’s hopes of securing a Community trademark (CTM) for its gold foilwrapped chocolate rabbit with a red ribbon and small bell.
In Formula One Licensing BV v OHIM (Case C-196/11 P, May 24 2012), the ECJ set aside a decision of the General Court, holding that the latter did not have jurisdiction to question the validity of a national trademark used to oppose the registration of a CTM.
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A recent decision of the US International Trade Commission highlights its potential role in brand owner enforcement strategies
Frank Ferrante and James Mercurio
The ruling by Kenya's High Court that the country’s Anti-counterfeiting Act is unconstitutional because it threatens
access to generic drugs could have major implications for pharmaceutical brand owners
Peter J Hime
While it has seemingly gone unnoticed, and only practice will prove how effective the changes will be, Greece’s new trademark legislation represents a notable step forward
Co-published editorialCountry Correspondents
Design and trade dress
Obtaining the most comprehensive protection for designs and trade dress in Canada often requires a coordinated strategy that relies on trademark, copyright and design protection
Current legislation in China is generally sufficient to protect trade dress, but improvements are needed to clarify the scope of protection afforded to shapes and appearance
The importance of trade dress has been reinforced by judicial precedents which have made clear that products are purchased not just by reference to brand names, but also to their overall presentation
Not all Italian courts take the same approach towards the lookalike phenomenon or trade dress in general
Mexican legislation does not prohibit the accumulation of rights; thus, a rights holder should seek to protect all elements contained in its trade dress in order to cover as much as possible
While there is currently no statute on trade dress in Poland, there are legal tools available to brand owners to protect their intellectual property
Although registrations alone cannot guarantee 100% protection against parasitic copying, combining registration with the Unfair Competition Law and the Copyright Law could safeguard a brand owner’s rights
In the absence of specific trade dress legislation, a number of protections are available to protect a product’s visual appearance
Businesses should consider all relevant protection available in the United Kingdom. Although unregistered rights are immediately available and incur no upfront cost, registered rights are more straightforward to establish and enforce
Design patents, trade dress and copyrights each have different requirements, resulting in the need for a multi-faceted approach
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