WTR 41 - World Trademark Review

World Trademark Review Issue 41 February/March 2013

Coca-Cola: ensuring that it’s always the real thing

Iconic bottles, secret recipes, billion-dollar brands – they are all in a day’s work when you head up the IP team at The Coca-Cola Company. Danise Lopes reveals how she manages the IP challenges, and more, for the world’s biggest beverage provider
Sara-Jayne Clover


Talking Point: industry developments 2012-2013

WTR asked a range of trademark professionals, industry representatives and legal specialists to highlight the issues that they felt were most significant in 2012, either in their own jurisdiction or internationally, and what they anticipate will be major developments in 2013
Trevor Little

Unveiling the global TM protectors Premium content

The 2013 edition of the World Trademark Review 1000, released in January 2013, comprehensively identifies the world’s leading trademark firms and practitioners. In this preview, exclusive to WTR subscribers, we identify the firms with the highest number of rankings by jurisdiction and by individual practitioner
Nicholas Richardson, Mary Hawkins, Simon Messenger and Emily Holbrook

Communicating trademark value to investors Premium content

While investors are well aware of the power of a strong brand, they may have little appreciation of the critical role that trademarks play in building brand value. Trademark counsel can help by framing their work in a way that investors will understand; but to do so requires a step into the unknown for many
Jack Ellis

Combining design and trademark rights to defend design creations

Using different combinations of IP rights can be a good way to protect designs. However, deciding which rights to use can be confusing. One strategy entails blending design rights and trademark rights, depending on how the design is to be marketed
Evelyne Roux

Protecting shapes in the European Union: some tactical European Union: some tactical

Registering shape marks can be a strategic challenge, with game-changing new decisions being handed down all the time. But with the right tactics, rights holders can successfully navigate this shifting landscape and secure strong protection for shapes and 3D marks
Simon Clark and Sarah Walker

Design protection:the US perspective

Many creations that involve design can benefit from the protection offered by design patents as well as trademarks. However, how should practitioners – particularly those outside the United States – decide which types of protection to apply for, and when?
Charles TJ Weigell III

A tale of three registries

A recent split between the trademark registries in Australia and New Zealand on the one hand, and OHIM on the other, with regard to confusing similarity highlights how different working methods can influence findings
Bill Ladas and Nicholas Butera

Lend a helping hand: tips on interacting with Chinese Customs Premium content

Customs is the first port of call for rights holders looking to protect their brands in China. Recording trademarks and lists of licensees with Customs is crucial to any anti-counterfeiting strategy but the hard work does not stop there. Working with local customs is essential and should be integrated into your brand protection strategy
Ren Haiyan and Shuhua Zhang

Trademark toolkit: Working with Customs

Managing relations with Customs is key to successful anti-counterfeiting actions. WTR asks local experts from across Asia to provide practical guidance on how to manage this relationship in their jurisdiction
Trevor Little

Sunbeam marks the start of a new day for trademark licences in bankruptcy

The standing of trademark licences in bankruptcy has long been a murky issue. While the Seventh Circuit’s decision in Sunbeam shines new light on the matter, both licensees and licensors must still pay attention to the fine print to make sure they are protected
Lynn A Sullivan and Michelle Zimmermann

Trademark law in Macau – a Portuguese legal regime inside China

Although Macau is one of two special administrative regions in China, its IP laws have more in common with the Portuguese regime. In particular, there are some striking divergences between the two traditions of which practitioners should be aware
Carlos Simoes, Manuel Rocha and Carolina Leao D’Oliveira

Appellate Board provides a shield against genericide attack

India’s IP Appellate Board waded through tens of volumes of evidence when a petitioner sought to have the XEROX marks declared generic. The ruling provides a number of strategic lessons for trademark counsel
Shwetasree Majumder and Eashan Ghosh

Drinking from a fire hose: future-proofing your internet strategies

With increasing numbers of apps available, new social media sites launching on a regular basis and the online world due to expand significantly – while protection budgets remain tight – there are a number of strategy shifts that brand owners should consider
Paul McGrady

Signs and wonders: how and why semiotics adds value to trademark design and protection

Understanding the complexity of brand identity messages can both help protect the brand from inflicting damage on itself and prevent others from utilising ideas in the same way. Semiotics is one of the fundamental building blocks to this understanding
Alex Gordon


ECJ clarifies position on use of mark in different form

The Court of Justice of the European Union (ECJ) has confirmed that use of a trademark in a form that is different from the mark as registered is sufficient to prove genuine use if the differing elements do not alter the distinctive character of the mark, even if that mark itself is registered.

Red Cross and IOC second-level protections given green light

The International Corporation of Assigned Names and Numbers (ICANN) board’s New Generic Top-Level Domain (gTLD) Programme Committee has approved two resolutions aimed at providing interim domain name protections to certain non-governmental and intergovernmental organisations.

M&S v Interflora: the end of witness gathering surveys?

In Marks and Spencer Plc v Interflora Inc ([2012] EWCA Civ 1501), the Court of Appeal of England and Wales has considered the practice of adducing favourable evidence of confusion from members of the public in trademark actions where such witnesses were selected from a wider group of survey respondents – or ‘witness gathering exercises’.

SPC considers whether OEM manufacturing for export constitutes ‘use’

In Ryohin Keikaku Co Ltd v TRAB, China’s Supreme People’s Court has held that evidence of use of a trademark in original equipment manufacturer (OEM) manufacturing activities solely for export was insufficient to show that the mark had been “used and achieved a certain amount of influence in China” under Article 31 of the Trademark Law.

‘Third party’ under Article 9(1) includes owner of later CTM, states AG

Advocate General Mengozzi has given his opinion in Fédération Cynologique Internationale v Federación Canina Internacional de Perros de Pura Raza (Case C-561/11), a reference for a preliminary ruling concerning the interpretation of Article 9(1) of the EU Community Trademark Regulation (207/2009).

Warnings issued against 242 gTLD applications

The Governmental Advisory Committee (GAC) has filed 242 early warnings to generic toplevel domain (gTLD) applicants. Early warning notices are not formal objections: they are issued where a gTLD application is considered to be potentially controversial or sensitive by one or more governments.

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


The time is NOW for special grounds?

The Court of Appeal of England and Wales has found that while any derogations to EU principles should be interpreted narrowly, there must be circumstances under which ‘special grounds’ apply or the exception becomes meaningless
Simon Bennett and Rachel Cook

How marketers are leading the fight against phishing

WTR has previously reported on the disconnect that can occur between trademark counsel and marketing departments. Yet when it comes to phishing, marketer initiatives are setting the enforcement agenda
Rob Holmes

Changes in the pipeline

Proposed changes to Poland’s Industrial Property Law would have a great impact on the registration, and protection, of designs
Marta Ziólkowska-Nasin´ska

Co-published editorialCountry Correspondents

Internet issues (other than domain names)

Canada - Bereskin & Parr LLP

What to do when your trademark is being used on social media sites

China - Kangxin Partners PC

Although levels of online infringement remain high, foreign and domestic rights holders can look forward to a bright future for both the monetisation and protection of their valuable content over the Internet

India - Ranjan Narula Associates

The debate as to whether the harmonisation of law and technological developments, or consumer awareness and education, is the route to meet online challenges continues. In reality, a combination is necessary

Italy - Bugnion SpA

The virtual world of social media sites is no longer the new frontier of intellectual property, but has become one of the normal arenas in which companies manage the legal issues arising from the unauthorised use of IP rights

Mexico - Uhthoff, Gómez Vega & Uhthoff SC

There are many obstacles to effective online law enforcement, with a lack of proper and specific regulations to assist brand owners not helping the situation

Romania - Vilau & Mitel

While more public education over the consequences of infringement is required, a number of tools are available to brand owners protecting their property online

Russia - Gorodissky & Partners

It is expected that in the foreseeable future, IP issues on the Internet will be no more complicated than regular market infringement matters

United Kingdom - Edwards Wildman Palmer LLP

Even where trademark law has not proved as helpful as rights holders might have hoped, clarifications to the law have at least enabled them to establish procedures for detecting and responding to online infringement of their trademark rights

United States - Edwards Wildman Palmer LLP

Trademark owners which believe that keyword advertising is causing them damage will face a number of hurdles if they opt for litigation


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