World Trademark Review Issue 53

February/March 2015

Made to measure?

A key question that this year’s non-legal trademark services survey sought to answer is whether, in addition to value for money, users are receiving the tailored services they require
Trevor Little

Features

Inside track: Rovio

Kati Levoranta, chief legal officer at Angry Birds creator Rovio Entertainment, outlines the challenges of working for a company that is adapting to the rise of its own home-grown super-brand
Tim Lince

Flying under the radar – secrecy in US trademark filings

The US Patent and Trademark Office’s publicly available trademark database can make it extremely challenging to maintain secrecy over new products or name changes. However, rights holders can take certain steps to keep future plans confidential
Susan Okin Goldsmith and Scott Smedresman

Building the in-house team: recruitment challenges

Recruitment can be a frustrating, protracted process. World Trademark Review canvasses in-house experts and consultants for their tips and tricks to improve your hiring
Tim Lince

Fixing problems and shaping the digital future through government engagement

Engaging with government on intellectual property is critical for brands if they want new laws to reflect their knowledge, experience and business. Trademark lawyers need to step up in order to help companies to achieve this
Toe Su Aung and Chris Oldknow

What is distinctive about ‘distinctive character’ and who decides?

Consumers are becoming increasingly sophisticated when it comes to understanding brands, which is highly relevant to the understanding of ‘distinctive character’. However, courts and tribunals are not keeping up with this trend in their decisions
Julius Stobbs

Litigating reverse confusion infringement actions

As new brands and marks continue to proliferate, cases involving claims of reverse confusion have increased dramatically. Practitioners need to understand how courts analyse likelihood of confusion factors differently where reverse, rather than forward, confusion is at issue
Tal E Dickstein

Catching up with the early-adopter super-brands

As a pathway to a second round of new generic top-level domains is announced and organisations weigh up whether to apply, it is worth considering why the existing ‘.brands’ applied and whether these reasons would be valid criteria for the future
Stuart Fuller

Social media and brand building in China

Chinese social media platforms are proving an inexpensive and extremely effective way of promoting brands. Western companies would be well advised to start building a social media profile for their brands, although not before investigating the attendant risks
Ai-Leen Lim

Overview of interim relief in trademark actions across Europe

With so many businesses operating across borders, the ability to obtain interim relief on a pan-European basis is an extremely powerful remedy. However, brand owners should consider shopping around for the most favourable forum
Sarah Wright and Kaisa Mattila

The potential demise of Canada’s use requirement

Eliminating Canada’s use requirement has been much discussed. While there would likely be some negative effects, a number of benefits could result from such a change – in particular, making Canada more attractive to foreign applicants
Tania D’Souza-Culora and Rachel Wilkinson-Duffy

Protecting slogans in Brazil

Slogans are a crucial part of a brand’s marketing efforts. However, Brazil’s IP law has reduced the protection available for slogans, especially where they are used solely as a means of advertising
Renata Cavalcante Carneiro da Cunha

Band on the run – trademark strategies for television talent show artists

Bands launched on reality shows can become overnight sensations, but where does that leave trademark registration and protection? Lawyers need to be able to clear and register marks rapidly in order to capitalise on the often brief window of fame
David Potter and Katie Goulding

Columns

Argentine Supreme Court rules on search engine liability

The Supreme Court has ended years of discussion on search engine liability for third-party content by finding that a fault-based standard should be applied in all such cases
Andrés O’Farrell and Gustavo Giay

Mispronunciation of brands – does it matter?

Ironing out pronunciation discrepancies via careful marketing campaigns can help brand owners to raise brand awareness and recognition, as well as strengthening their marks against competitors with marks that are phonetically similar
Sharon Daboul

Blocking access to counterfeit sites

In a landmark ruling the High Court of England and Wales has granted an injunction against an internet service provider to prevent access to websites selling counterfeits. While this is good news for rights holders, it is unlikely to be the final word on the matter
Jeremy Blum

Perspectives

Trademark-related quotes, opinions and observations from around the globe

Co-published editorialCountry Correspondents

Publicity and image rights

Canada: A problem on the rise
Canada

Bereskin & Parr LLP

With the explosive growth of internet-based services, misappropriation of identity or personality cases may become even more common in Canada

China: Choosing the right weapon
China

Kangxin Partners PC

Protection for publicity and image rights may be limited under the Trademark Law, but an application to register a personal name or portrait as a trademark is highly advisable

India: Reacting to a celebrity-obsessed culture
India

RNA Intellectual Property Attorneys

With the phenomenal growth of the media, consumerism and celebrity endorsements, the protection of publicity and image rights requires greater attention and specific legislation in India

Italy: A strong stance on protection
Italy

Bugnion SpA

The Italian legal system grants strong protection to publicity and image rights, and exceptions to such rights must be strictly interpreted

Mexico: A question of identity
Mexico

Uhthoff, Gomez Vega & Uhthoff

Anyone in Mexico has the right to choose whether to be publicly known

Middle East: Taking a flexible approach in Qatar
Middle East

Cedar White Bradley

As there is no specific legislation for the protection of image and publicity rights in Qatar, practitioners should take a adaptable approach when tackling the issue

Poland: A busy year for the courts
Poland

Patpol

Several interesting judgments regarding the use of images in Poland were handed down in 2014

Romania: A fundamental right
Romania

VILAU | ASSOCIATES

Romania’s Constitution acknowledges protection for image rights only as a general and indirect principle, but legislation has significantly evolved in this area during the last 20 years

United Kingdom: An imperfect image
United Kingdom

Edwards Wildman

In the United Kingdom, there is no codified body of law which explicitly protects image or publicity rights

United States: To tweet or not to tweet?
United States

Davis Wright Tremaine

Companies should use social media to promote their products, services and brands. However, when those efforts include posting about celebrities in particular, the key is to proceed with caution

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Issue 68