World Trademark Review Issue 45

45 October/November 2013

Nike: the brand of champions

Nike has won global fame not only for its iconic product lines and sponsorship deals with some of the world’s biggest – and sometimes baddest – sporting heroes, but also for its clever, controversial ad campaigns and alternative branding strategies. Senior trademark counsel Jaime Lemons reveals how she and her colleagues navigate these issues, and more, for the world’s leading sportswear brand
Sara-Jayne Clover

Features

OHIM users have their say on a year of change in European trademarks Premium content

As part of our annual OHIM focus, WTR polled the office’s top filers to gauge their perception of its performance and address some of the most pressing issues in the European trademark industry – and asked OHIM to provide an update on its activities
Trevor Little

Observations from the Observatory

Paul Maier, director of the EU Observatory on Infringements of Intellectual Property Rights (OHIM), reflects on the first year of the Observatory, and outlines the initiatives currently being undertaken to support users
Paul Maier

Two years of progress in mediation

TM Margellos, coordinator of the OHIM mediation team, presents an update on the office’s mediation service, launched two years ago
Théophile Margellos

Creating a robust anti-counterfeiting strategy for Latin America

When creating an anti-counterfeiting programme for the region, factors such as the legal system, the political, economic and social environment and the infringer’s modus operandi are important considerations
Gustavo Patricio Giay

Standing ground: an analysis of territoriality in US trademark law

Recent decisions have contributed to a shift in the treatment of territoriality in US trademark law, with US courts increasingly focusing on whether foreign infringing activities have left a ‘dent’ in the United States
Julia Anne Matheson and Anna S Balishina Naydonov

Measuring the boundaries of protection

In efforts to secure protection for their threedimensional and colour trademarks, are trademark counsel pushing the boundaries of trademark protection?
Christopher Pett

Grand designs for trademark counsel

Industrial design protection is progressively being viewed as a core component of IP strategy for many consumer-facing businesses. Trademark counsel have a golden opportunity to add corporate value by taking the initiative on design rights
Jack Ellis

Are the indications good?

Considering the most recent decisions, it seems that selection of a geographical mark should be based not only on the current position, but with one eye firmly on the future
Rebecca Tew

The top 10 enforcement trends against luxury fakes in China

In China, an effective anti-counterfeiting strategy demands much more than enforcement of the law. It is therefore crucial for luxury brands to track enforcement trends and evolve their strategies accordingly
Loke-Khoon Tan, Marcia Lee and Bertha Ho

Doing business in India: the dos and don’ts for brands

India’s accession to the Madrid Protocol is the latest development to focus brands’ attention on the commercial opportunities in the market. However, a number of critical trademark issues are involved in selling or acquiring brands, investing in companies and entering into licence arrangements in India
Adheesh Nargolkar and Shailendra Bhandare

Time to make your brand protection strategy more social in Indonesia

It is estimated that approximately 96% of Indonesians use social media, a rate higher than any other country in the world. As well as offering an important communication tool for brands, this necessitates a tailored social media plan to protecting a brand’s intellectual property, goodwill and reputation in the country
Andrew Diamond

News

ECJ rules on genuine use and relevance of colour

In Specsavers International Healthcare v Asda Stores Ltd (Case C-252/12), the European Court of Justice (ECJ) has held that colour is relevant to the global assessment of the likelihood of confusion and unfair advantage.

Cadbury prevents registration of Nestlé’s Kit Kat shape mark

The UK Intellectual Property Office (IPO) has rejected Société des Produits Nestlé SA’s application for the registration of a three-dimensional (3D) shape mark representing its Kit Kat chocolate wafer product, except in relation to cakes and pastries (Case O-237-13).

Further gTLD delays proposed as study reveals ‘risk to Internet’

Following the release of a study that considers the risk of collision between applied-for new generic top-level domain (gTLD) strings and non-delegated TLDs, the Internet Corporation for Assigned Names and Numbers (ICANN) has proposed a series of mitigation measures.

Clash between governments and mark owners at Durban meeting

The fracture between the Government Advisory Committee (GAC) and trademark owners over geographic terms was apparent during ICANN’s Durban meeting in July.

ECJ: OHIM has discretion to take into account additional evidence of use

In New Yorker SHK Jeans v Office for Harmonisation in the Internal Market (OHIM) (Case C-621/11 P), the European Court of Justice (ECJ) has held that OHIM was entitled to take into account additional evidence of use filed by the opponent after the original deadline for filing proof of use had expired.

Latest Trademark Law amendments double maximum statutory compensation

The proposed third amendments to China’s Trademark Law have undergone a second reading during the third session of the 12th National People’s Congress Standing Committee. Although the draft amendments were not made available to the public, details were posted on the National People’s Congress website.

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

Columns

Market Focus: Latin America

Latin America has experienced tremendous economic development in the past decade, bringing about a marked acceleration in trademark-related activity throughout the region. Choosing the right legal partner, however, remains key
Nicholas Richardson

Safety in numbers – working together to build respect for IP

Rights holders have critical roles to play in establishing an environment that is respectful of intellectual property, as close public-private collaboration is essential
Eun Joo Min

Group buying sites: a trademark perspective

Group buying sites are soaring in popularity, but what liabilities do such sites bear if the products on sale infringe trademark rights?
Ito Eugene Low

The impact of the High Court ruling in Interflora v M&S

Interflora is good news, in terms of AdWord strategy and enforcement, for owners of major reputable brands and particularly those with a history of co-branding with other businesses
Rob White

Renewing efforts to establish trademark opposition proceedings in Mexico

While Mexico is not bound to introduce opposition proceedings as a result of accession to the Madrid System, moves are afoot that should result in substantive reform to the Industrial Property Law by the end of the year
Alonso Camargo Sordo

Co-published editorialCountry Correspondents

Enforcement and litigation

Canada - Bereskin & Parr LLP

A number of options are available to brand owners seeking to enforce their rights in Canada

China - Kangxin Partners PC

It seems that everyone is talking about trademarks in China. Far and away the most common question continues to be: is it really possible to enforce trademarks in China?

Finland - Berggren Oy Ab

The establishment of a specialised IP court has the potential to improve significantly both the quality of decisions and the way that cases are handled on a practical level

Germany - Meissner Bolte & Partner

Enforcement of trademark rights online remains a challenge and advertisers would be well advised to observe the limits established on the use of keywords by Germany’s Federal Court of Justice

India - Ranjan Narula Associates

Working with law enforcement authorities and courts in India can be challenging, but by adopting the right approach, clear results can be achieved

Italy - Bugnion SpA

Analysis of recent cases illustrate the effectiveness of the Italian system in the protection of designs, both registered and unregistered

Mexico - Uhthoff, Gómez Vega & Uhthoff SC

Despite the limitations of provisional measures in Mexico, when correctly planned and executed they can prove an adequate tool to enforce IP rights

Poland - Patpol - European and Polish Patent and Trademark Attorneys

The Polish legal system offers different tools to protect IP rights – the key is striking the right balance between prevention and speedy responses to infringement

Romania - Vilau & Mitel

Trademark rights can be enforced through prosecution or judicial proceedings, leaving rights owners with a number of options to consider

Russia - Gorodissky & Partners

The enforcement options for trademark owners are constantly evolving. When considering approaches to the resolution of a particular problem, rights holders should balance a number of considerations

Turkey - Destek Patent Inc

Trademark owners enforcing their rights in Turkey should consider the following tips when formulating their strategy

United Kingdom - Edwards Wildman Palmer LLP

A number of factors have to be considered when creating an anti-counterfeiting strategy – but the law is there to help

United States - Edwards Wildman Palmer LLP

The extraterritorial reach of the Lanham Act is a viable option against foreign infringers, with circuit courts showing a trend towards broadening the scope of application

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