World Trademark Review Issue 40 December/January 2013

Market Focus: BRICS

As Brazil, Russia, India, China and South Africa (BRICS) continue their apparently unstoppable economic march, demand is increasing for the services of specialist trademark lawyers with the expertise to protect and enforce the intellectual property of both domestic and international companies


A sign of the times to come

Although it was held in one of the world’s oldest cities, this year’s MARQUES annual conference was all about looking to the future, with sessions tackling trademark protection in the new gTLD environment, the development of trademark offices and how geolocation technology will pose unprecedented brand protection challenges
Trevor Little

Designing the future of brand protection

INTA’s Design Protection Conference featured a number of important lessons for trademark counsel – not least ensuring that the need for IP protection is not overlooked by corporate designers
Trevor Little

TM Toolkit: Lessons in licensing

Licensing deals can provide trademark owners with a much-needed revenue stream – but equally, a lot can go wrong. WTR asked a range of practitioners to provide their top tips for successful licensing and to outline key jurisdictional requirements
Trevor Little

Square pegs in round holes or the perfect fit? Premium content

WTR’s second annual non-legal trademark services survey assesses industry needs and asks whether – against a backdrop of squeezed budgets, growing workloads and an increasingly complex trademark environment – service providers are meeting the needs of their clients
Trevor Little

Transforming China from a manufacturing power to a brand power

While China’s trademark system has significantly helped the country’s economic development, changes will be necessary if it is to continue to make a significant contribution to the evolution of a knowledge-based economy
George Chan

Does Louis Vuitton’s recent victory at the US International Trade Commission mark that tribunal as a viable alternative to district court?

While the ITC can provide significant injunctive relief to holders of registered trademarks whose trademarks are infringed, it is not for everyone. The selection of the right forum will depend on a number of factors
Tiffany W Shimada and Carl C Charneski

When reputation founders: protecting corporate reputation in a volatile environment

While reputation and brand may appear to be synonymous, the nuances have implications for trademark and IP counsel seeking to protect clients’ interests – particularly when reacting to crises and quantifying the impact of competitive incursions on a brand
Linda Locke

Can a counterfeiting compromise be reached?

The prevailing view among trademark owners is that counterfeiting must be tackled without compromise. But some academics are suggesting that brand owners may have got the wrong idea about fakes
Jack Ellis

Trademark transfers: be a hero, not a bystander

29 pointers on how to effectively achieve the transfer of trademark rights
Peter J Riebling

Mission control: trademark strategies for non-profit organisations

For non-profit organisations, the redirection of surplus revenues to achieve the organisational mission is paramount, but equally important is an emphasis on trademark protection. Failure to do so risks your organisation falling foul of some of the problems that have plagued others
Alicia Groos and Sheri Hunter

Geographical indications and designations of origin: extending coverage to the wine sector

Guidelines governing the protection of geographical indications (GIs) and protected designations of origin (PDOs) are in a state of constant flux. For some industries – such as the wine sector – the picture is complicated further by additional requirements. The interplay between GI, PDO and trademark protection makes it critical to stay on top of the latest regulations
Paola Gelato


Both sides welcome Second Circuit decision in red soles dispute

In Christian Louboutin SA v Yves Saint Laurent America Holding Inc (11-3303-cv), the US Court of Appeals for the Second Circuit has held that a single colour is protectable as a trademark for fashion items in certain circumstances – with representatives for both parties welcoming the decision.

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


Registration issues

While there are benefits in assigning trademark rights only in respect of certain wares/services, in Canada this can prove challenging
Tariq Remtulla

The view online

Critics of new Malaysian legislation suggest it will restrict the ability of brands to interact with customers online. However, there are strategies that rights holders can employ to minimise risk
Kherk Ying Chew, Sonia Ong and Chen Hong Sze

Co-published editorialCountry Correspondents

Protecting unregistered trademarks and other commercial signs

Canada - Bereskin & Parr LLP

While registration brings a number of advantages, brand owners in Canada can utilise the action of passing off to protect unregistered rights

China - Kangxin Partners PC

Protection for unregistered trademarks and other commercial signs is available in China. However, in each case there will be skills and tricks to juggle possible legal grounds and the available evidence

Germany - Siebeke Lange Wilbert

While protection can be granted without registration, as well as offering opportunities to brand owners, unregistered protection is not without risk

India - Ranjan Narula Associates

The Indian courts have gone beyond the text of the statutes to protect the worldwide reputation that any trademark or commercial sign can acquire by virtue of its use, promotion or advertisement

Italy - Bugnion SpA

The system of IP protection in Italy is rigorous and effective – but rights holders need to adopt the correct measures to protect their marks

Mexico - Uhthoff, Gómez Vega & Uhthoff SC

Mexico follows a ‘first in time is first in right’ approach. While a trademark registration is not mandatory in order to use it or to initiate legal claims against third parties, it brings some important benefits

Romania - Vilau & Mitel

With protection for well-known trademarks and unregistered trademarks now possible in Romania, case law continues to develop

Russia - Gorodissky & Partners

In Russia, legal protection of commercial designations corresponds to international practice; in time, legal practice will develop to the extent that all rights holders will be effectively protected

United Kingdom - Edwards Wildman Palmer LLP

In the United Kingdom the protection of unregistered trademarks hinges on the ability to prove goodwill. While this can be difficult to establish, it is the one factor over which traders have the greatest control

United States - Edwards Wildman Palmer LLP

Given the strong tradition for protecting unregistered trademarks in the United States, practitioners must take a different approach to filing practices and enforcement from that adopted in first-to-file jurisdictions


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Issue 73