World Trademark Review Issue 39October/November 2012
WTR sits down with Antonio Campinos, president of
the Office for Harmonisation in the Internal Market
(OHIM), to present users’ questions
The chair of the Cooperation Fund, Lord Mogg, explains what is behind the strategy to create common IT tools for IP offices and how this will help users
Advocate General Sharpston’s opinion in Leno Merken BV v Hagelkruis Beheer BV (Case C-149/11) stated that the “use of a CTM within the borders of a single member state is not, of itself, necessarily sufficient to constitute genuine use of that trademark, because the territorial scope of the use is merely one of the factors to take into account in the assessment”.
Over the following pages, private practice trademark counsel from 20 jurisdictions outline the benefits of their countries’ Community trademark courts
The eagerly awaited IP TRANSLATOR decision led to
immediate changes in OHIM practice, but how will
national offices react?
Jean-Frederic Gaultier, Sarah Wright, Jade Macintyre and Uli Foerstl
As efforts continue to develop protection for traditional cultural expressions, brand owners need to ensure they are tracking the latest legal developments as they develop new trademarks and brands
Tracey L Mosley, Lynell Tuffery Huria and Jude Antony
Given the increased judicial and administrative focus on developing strong Chinese brands, enhanced protection is increasingly available for all trademarks that have been used and have established a reputation in China. However, in order to receive protection, a number of clear steps must be taken
Spring Chang and Steven Q Andrews
Are iPAD and GOOGLE in danger of going the way of
zipper and cellophane? Time to assess the true risk of
Susan Okin Goldsmith
In an uncertain economic climate, licensing can
provide a much-needed fillip to brand exposure and
add to the bottom line. But not every brand extension
is a guaranteed success. Counsel and brand strategists
must remember that the push for extra value can
sometimes go too far
The promiscuity of a brand’s licensing activities has a
significant impact on its valuations, with a number of
key factors to be considered
Kelvin King and Keith Hodkinson
As brand owners consider trademark protection
strategies for the world of new generic top-level
domains, analysis of the applications revealed by
ICANN can inform future tactics. It also provides an
invaluable insight onto how the future online
environment will shape up for trademark owners
With the applications known, brand owners need to
prepare for the potential challenges posed by the
expanded online space. Ongoing attention to the
landscape of applications and new registries, and
careful planning, will allow brand owners to adapt
their domain name and enforcement strategies to
meet these challenges
Brian J Winterfeldt
The surge in popularity of own-brand products has
been matched by improvements in their packaging, leaving brand owners increasingly concerned about the risk of lookalikes. WTR examines how the marketplace is evolving and the future challenges for brand owners
As the ‘trademark bullying’ label continues to divide,
the fine line between being a trademark hero or bully
is becoming increasingly blurred
Advocate General Sharpston has handed down her opinion in Leno Merken BV v Hagelkruis Beheer BV (C-149/11, July 5 2012), advising that use of a Community trademark (CTM) within the borders of a single member state is not, of itself, necessarily sufficient to constitute ‘genuine use’ of that mark.
The decision of the US Court of Appeals for the Seventh Circuit in Sunbeam Products Inc v Chicago American Manufacturing LLC (Case 11- 3920, July 9 2012) represents a major victory for trademark licensees.
The European Parliament has voted to reject the Anticounterfeiting Trade Agreement (ACTA). Despite a last-minute request to delay the vote until the ECJ has ruled on whether ACTA is compatible with EU law, Parliament had its say: there were 478 votes against the treaty, 39 in favour and 165 abstentions.
Australia is to press ahead with its plain packaging law after the High Court rejected an appeal by British American Tobacco, Philip Morris, Japan Tobacco and Imperial Tobacco against the Tobacco Plain Packaging Act, which was approved by the Australian Senate in November 2011.
In Pie Optiek v Bureau Gevers (Case C-376/11, July 19 2012), the ECJ has held that agreements authorising the registration of ‘.eu’ domain names were more akin to contracts for services than to trademark licences, and that such ‘licensees’ should not have been allowed to register ‘.eu’ domain names during the sunrise period.
ASEAN A memorandum of cooperation on industrial property has been concluded between the Association of Southeast Asian Nations (ASEAN) member state IP offices and the Japan Patent Office (JPO).
The advocate general’s opinion in Leno Merken BV v Hagelkruis Beheer BV addresses the issue of genuine use in the Community – but does it provide a usefully flexible test or one that is simply too uncertain to be helpful?
Nick Bolter and Gareth Dickson
Changes to Poland’s Civil Procedure Code should substantially improve the enforcement of IP rights in the country
Co-published editorialCountry Correspondents
Publicity and image rights
While personality rights are recognised in Canada, a number of questions remain
There will always remain a fascination and admiration for those in public life – alive or dead. Similarly, there will be always be distinct rules and practices to follow when using the image of another
In Germany, balancing the protection of personal rights with press freedom frequently leads to controversial court judgments
With a thriving film industry in India, the expectation would be that publicity and image rights laws are firmly established. But is this the reality?
Image rights in Italy have been afforded different levels of protection in different industries
Mexico - Uhthoff, Gómez Vega & Uhthoff SC
Publicity and image rights have been inadvertently protected under the Copyright Law, which does not grant special treatment for celebrities’ image rights
Romania - Vilau & Mitel
While image rights have a history of protection in Romania, the legislation has evolved over time, with last year’s Civil Code representing a fresh approach to the issues surrounding individuals’ rights
While the idea of image rights is relatively young, Russia has developed a clear approach to publicity and related rights
United Kingdom - Edwards Wildman Palmer LLP
Until Parliament legislates on the issue, UK rights holders are subject to uncertain protections for publicity and image rights
Right of publicity law is a developing and uncertain area of law in the United States. A federal statute in this area would increase predictability of results and decrease legal costs
Global trademark practitioners offer practical guidance on the creation and execution of a resilient social media strategy
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