World Trademark Review Issue 44 August/September 2013

Inside Track: Mastercard

As the way in which people shop evolves, so too do the offerings of leading financial services providers. Head of IP at MasterCard Worldwide Colm Dobbyn reveals how he ensures that the company’s trademark strategy keeps pace with change
Sara-Jayne Clover


Firm footing? Brands in the trademark legal services market Premium content

With external counsel under acute pressure to provide a wider range of services at more cost-effective price points, trademark law firms and practitioners are increasingly seeking to differentiate themselves on the market. Are brands the answer?
Jack Ellis

Industry Awards 2013

On May 7 2013, WTR announced the winners of its seventh Industry Awards at an exclusive ceremony at the stunning Belo Mansion in the heart of the Dallas Arts District. 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.

From gTLD risks and social media exploitation to brand resilience and the benefits of a fluid approach: inside INTA 2013

WTR looks back at the practical takeaways from this year’s International Trademark Association annual meeting, held in Dallas, Texas
Joff Wild, Lise Charles, Trevor Little and Jack Ellis

The good, the bad and the missing in the plans for Europe Premium content

The European Commission has unveiled an ambitious raft of legislative proposals that would not only shake up the way that the Office for Harmonisation in the Internal Market is organised, but also set out to harmonise trademark law throughout the European Union
Alexander Von Mühlendahl

Talking Point: Revision proposals for the EU Community Trademark Regulation and the EU Trademark Directive

On page 72, proposals to revise the EU Community Trademark Regulation and the EU Trademark Directive are examined in detail. Following official publication of the documents, WTR asked a range of European trademark experts for their reaction to the content and their thoughts on the likely impact should the revisions be adopted
Trevor Little

Survey evidence around the world – a comparative analysis

While survey evidence has an important role to play in trademark disputes, the rules vary depending on jurisdiction. This article examines how survey evidence in trademark disputes is treated by courts in five different jurisdictions. It is clear that survey evidence still has an important role to play in trademark cases, but that its use is more strictly controlled in some territories than others – in particular, the United Kingdom and Australia. Common themes emerge across jurisdiction – notably, that transparency in dealings is a laudable aim, with surveys being shared with opposing parties before trial. Cooperation between the parties is encouraged where possible, while courts are keen that parties avoid excessive costs in relation to gathering survey evidence.
Gregor Vos, Joel Smith, Alexandra Néri, Celia Davies, Sarah Burke, David R Eberhart, Patrick Sands and Ronan Hardouin

Can retail store designs be protected as trade dress or 3D marks?

As Apple breaks new ground by registering the design and layout of its stores in the United States, this article analyses how the tech giant procured trade dress protection for its stores and discusses how Europe is reacting to the development
Teresa A Lee and Simon Tracey

‘Trademark bullying’ – time to get some clear definitions

While trademark bullying does exist, there is a danger that using the term too glibly implies that bullying takes place whenever a large and powerful rights holder enforces its rights. This article suggests a more level-headed approach, including the use of precise definitions
Alexander H Butterman, Leah Chan Grinvald, Lara Pearson, Natalie Sulimani and Chris Wheeler


Interflora: a victory against the use of trademarks as AdWords?

The High Court of England and Wales has ruled in the long-running dispute between Interflora Inc and Marks & Spencer (M&S) over the latter’s use of the mark INTERFLORA as an AdWord.

Supreme Court to define grounds for bringing false advertising claims

The US Supreme Court has decided to take on a case that could have wide-ranging implications for brand owners in the United States.

OHIM announces class headings breakthrough

Following the decision of the European Court of Justice (ECJ) in Chartered Institute of Patent Attorneys v Registrar of Trademarks (Case C-307/10), better know as the IP TRANSLATOR decision, the Office for Harmonisation in the Internal Market (OHIM) has announced a “breakthrough” regarding the treatment of class headings

TMCH: level of trademark owner engagement revealed

In the same week that the Internet Corporation for Assigned Names and Numbers (ICANN) published the first responses to the recent Governmental Advisory Committee (GAC) advice on the generic top-level domain (gTLD) programme, Deloitte revealed that 636 trademark holders and 119 agents have registered with the Trademark Clearinghouse.

Global View

International: This year’s inductees to the IP Hall of Fame were honoured at an exclusive gala dinner held in Boston’s Fairmont Hotel on June 10


NYC law goes after purchasers of counterfeit goods

A proposed new law would make it illegal to purchase counterfeits in New York City. The measure might seem radical until you count up the damage wreaked by counterfeits – not only for brand owners, but for consumers as well
Joseph C Gioconda

From filing agency to enforcer

How the Philippines Intellectual Property Office is stepping up its policing activities after new legislation bolstered its enforcement powers
Trevor Little

Trademark bullying: legitimate problem or passing fad? The USPTO responds

In issue 42 of WTR, a feature focused on the issue of trademark bullying. Deborah Cohn, the commissioner of trademarks at the US Patent and Trademark Office, contacted us to respond to the article and outline the agency’s ongoing efforts to address this controversial subject
Deborah Cohn

Market Focus: United States

When surveying the US legal services market, it is important to assess both national and regional trends

Time for the Trademarks Administrative Committee to take a stand over dilution

Three recent decisions confirm that the Greek Trademarks Administrative Committee is struggling with dilution arguments. As pressure mounts between canny infringers and territorial rights holders, national trademark offices need to address these issues head on
Nikos Prentoulis

Co-published editorialCountry Correspondents

Fluid trademarks (including slogans)

Canada - Bereskin & Parr LLP

While rights holders can freely explore the creative and commercial opportunities presented by the use of a modified form of their trademark, they would be well advised not to stray too far from the original mark

China - Kangxin Partners PC

Fluid trademarks are gaining popularity in China, but a number of grey areas remain

Finland - Berggren Oy Ab

A fluid trademark should not be an end in itself and needs to be carefully approached

Germany - Meissner Bolte & Partner

Rights holders are advised to take precautionary measures in order to avoid problems and issues related to the use of fluid marks

India - Ranjan Narula Associates

While new forms of advertising can be engaging, they also pose unique risks from an Indian trademark law perspective

Italy - Bugnion SpA

Creating new images and periodically modifying marks is arguably the best way to focus consumer attention on specific elements or messages, but caution is needed

Mexico - Uhthoff, Gómez Vega & Uhthoff SC

Before using fluid marks, it is important to discuss the potential impact and take action to prevent the loss of trademark rights or lengthy and expensive litigation

Russia - Gorodissky & Partners

While fluid marks are an eye-catching marketing technique, protection should be obtained for all versions of any trademarks currently in use or expected to be used in future

United Kingdom - Edwards Wildman Palmer LLP

It is highly likely that fluid marks will become the subject of IP disputes in the near future. Accordingly, brand owners should consider what combinations of IP right they may be able to use in order to protect them

United States - Edwards Wildman Palmer LLP

A powerful marketing tool, fluid marks must also be managed the right way, relying on strong underlying marks


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