World Trademark Review 43
Features
Trademark Toolkit: An innovative approach to financing
A number of crucial decisions must be made when
considering whether to use your brand as collateral
against corporate financing
Working overtime – trademark counsel’s efforts to push brands up the boardroom agenda
Now in its fifth year, the WTR Global Benchmarking
Survey takes the pulse of the industry. While it is true
that the hard times are far from over, some positives
have come out of adversity – not least a greater
corporate appreciation of trademark value. But there’s
still plenty of work to be done
The shape of things to come – the next 18 months in trademarks
The trademark landscape is consistently being shaped
by political movers and shakers, consumer trends,
industry organisations and wider influences. WTR
gazes into its crystal ball to see who and what are
likely to transform the trademark environment
over the next 18 months
WTR Industry Awards 2013
This year’s shortlist for the WTR Industry Awards
spans the spectrum of trademark-related activity.
However, if there is one common trait that our
nominees share, it is the value that they are adding
to their respective organisations
The power of brands - understanding royalty rates
Ensuring that a brand is licensed correctly and that
an appropriate royalty rate is in place is essential to
secure the longevity and success of a business. Correct
calculations are therefore critical
Michael Jordan, Apple and soft drinks – the trademark year in China
Trademark cases continued to make headlines in
China during 2012. Malicious registrations of celebrity
names, a multimillion-dollar settlement by Apple and
the soft drinks case that sparked a national debate
show that trademarks are still big business
2012 Down Under – a sample of interesting cases for brand owners
Parallel imports, overseas brands and the registrability
of building names came under scrutiny from the
Australian courts last year. As some of these cases
demonstrate, the application of even long-established
trademark protection principles can evolve
Creating consistency in Europe
Over the last 12 months, the European Court of Justice
has provided several clarifications related to both
registrations – in particular, the issue of specification
of goods and services – and defences against claims for
revocation on the grounds of non-use
Getting over confusion
Over the last year South Africa’s Supreme Court of
Appeal has issued several decisions that consolidate
an already solid body of trademark case law. There are
indications that 2013 could also see it provide muchneeded
guidance on tests for confusing similarity
when dealing with similar goods and services
Is the tide turning for trade dress decisions in Brazil?
A string of recent decisions suggests that Brazilian
judges are wising up to trade dress infringement.
Although damages are still modest, it is hoped that
this will also shift within the next few years
Nike stirs up the opinions from 2012, which suggest discretion may well be the better part of valour
The Supreme Court’s affirmation of the dismissal
of Nike’s own infringement suit after Nike had
issued a broad covenant not to sue not only allowed
the sportswear giant to sidestep an invalidation
counterclaim, but also suggests a route whereby rights
holders having second thoughts can withdraw to
fight a different battle another day
A big year for rights holders in Canada
Significant developments in the last year – from
case law that allows the registration of sound marks
to a bill with important new anti-counterfeiting
provisions – could affect the way that all rights
holders do business in Canada
Brand licensing in the US – advice for Chinese brands
If they are not already, Chinese brand owners are
poised to expand westward into the lucrative US
market. They will boost their chances of success
by taking care to define and differentiate their
own products and finding strong US licensees to
partner with
Beijing court issues breakthrough ruling on similarity
A groundbreaking verdict from the Beijing High
Court could provide crucial guidance on assessing
similarity between not only trademarks, but also the
goods that they designate. The court found that while
due attention should be paid to the official guidance,
simple market facts should also be considered
Managing Sino-foreign joint ventures in China
Sino-foreign joint ventures are the best way to
produce internationally branded goods for middleclass
consumers in China. Although the relationship
can be tricky to manage, some basic rules can make it
harmonious and profitable for both partners
Get your head in the cloud
The cloud is an environment that trademark counsel
need to monitor. Brand owners will still face the same
clearance, prosecution, enforcement and priority
issues they have historically faced – albeit in the cloud
News
Proposed reforms to EU trademark system published
The European Commission
has published its proposals
to amend the EU Community
Trademark Regulation
(207/2009), the EU Trademark
Directive (2008/95/EC) and
EU Regulation 2869/95/EC on
the fees payable to the Office
for Harmonisation in the
Internal Market (OHIM). The
proposals are designed to “make
trademark registration systems
all over the European Union
cheaper, quicker, more reliable
and predictable”.
Clearinghouse opens for business; first gTLD trademark disputes revealed
The Trademark Clearinghouse
– the rights protection
mechanism built into the
Internet Corporation for
Assigned Names and Numbers’
new generic top-level domain
(gTLD) programme – has
commenced operations.
Bill C-56 introduces significant changes to Trademarks Act
The Canadian government
has introduced Bill C-56 –
the Combating Counterfeit
Products Act – which proposes
significant changes to the
Trademarks Act and Copyright
Act. The bill aims to “protect
Canadian consumers, Canadian
manufacturers and retailers
as well as the Canadian
economy from the health and
economic threats presented
by counterfeit goods”, and also
provides for the registration of
non-traditional trademarks.
Google updates AdWords trademark policy
Google has revised its AdWords
trademark policy to lift a
restriction on using trademarks
as keywords in a number of
countries. Starting April 23
2013, it will no longer prevent
advertisers from selecting
third-party trademarks as a
keyword in advertisements
targeting Australia, Brazil,
China, Hong Kong, Macau,
New Zealand, South Korea
and Taiwan. This means that
Google’s AdWords trademark
policy is now harmonised
worldwide.
ECJ: ‘third party’ under Article 9(1) includes owner of later registered CTM
In Fédération Cynologique
Internationale v Federación
Canina Internacional de Perros
de Pura Raza (Case C-561/11),
the European Court of Justice
(ECJ) has held that that a ‘third
party’ under Article 9(1) of the
EU Community Trademark
Regulation (207/2009) includes
the owner of a later registered
Community trademark (CTM).
New opposition procedure comes into force
The Intellectual Property
Laws Amendment (Raising
the Bar) Act came into effect
in Australia on April 15 2013.
The most important change
is the introduction of a new
opposition procedure.
Interflora v M&S: are the days of survey evidence over?
The Court of Appeal of England
and Wales has handed down
judgment in Interflora Inc v
Marks & Spencer PLC ([2013]
EWCA Civ 319). This decision
– the second judgment of
the court in this case on the
admissibility of evidence
from witnesses identified
through surveys – seems to
make it even harder to adduce
survey evidence in trademark
infringement cases.
Global View
United Kingdom
The UK Intellectual Property Office
has launched a consultation to obtain
stakeholders’ views on the appropriate
procedural changes for the introduction
of a fast-track opposition procedure
within the Trademark Tribunal. The
consultation outlines proposals for the
fast-track procedure and seeks views
on the introduction of a refundable
appeal fee for inter partes appeals to
the appointed person. The deadline to
submit comments is May 17 2013.
Columns
Raising the bar for Australian trademark law
The IP Laws Amendment Act is designed
to boost IP protection across the
board. Provisions aimed specifically at
trademarks include an overhaul of the
opposition process, improved border
protection measures and the extension of
legal privilege to trademark attorneys
Ethiopia welcomes long-awaited new trademark law
The long-awaited regulation for the
Ethiopian Trademark Registration and
Protection Proclamation means that work
can begin on modernising Ethiopia’s
trademark regime. However, there may
be a few sticking points in the transition –
not least the fact that the much-discussed
IP Gazette has yet to launch
Driving jurisdictional consistency
What the draft agreement on a unitary
trademark in Belarus, Kazakhstan and
the Russia Customs Union may mean for
brand owners
Co-published editorial
Country correspondents
Trademark licensing and ownership issues
Canada - Bereskin & Parr LLP
Understanding what trademark use means in Canada and how such use is best controlled by a notified
licence agreement will help in retaining trademark rights in Canada
Foreign companies seeking to license or assign trademarks in China should be aware of the country’s
idiosyncrasies – such as the need to obtain the authorities’ approval for an assignment to be valid
Finnish games producer Rovio is a prime example of successful licensing with its Angry Birds, using some
unorthodox methods along the way
Recent Federal Court of Justice decisions have held that the validity of a sub-licence is independent of that of
the original licence. Rights holders should thus take action to remain in control of their intellectual property
While the legal framework governing trademark licensing in India has been liberalised, brand owners
should remain vigilant when drafting their agreements
Italian jurisprudence is keen to protect licensors’ rights – the key is ensuring that attention is paid to
licence agreements
The current practice of the Mexican Administrative Authority in connection with use renders the
assignment of trademarks potentially risky
Those considering licensing in Poland should acquaint themselves with the country’s specificities –
in particular, the issues surrounding rights assignment and termination
A checklist to follow when engaging in trademark licensing in Romania
Those embarking on trademark licensing in Russia for the first time need to understand the legal framework
and practical requirements before they can enjoy some of the benefits
Licensing can add considerable value to a brand. But some pitfalls must be avoided
A licensing agreement in itself offers no guarantee of saving a trademark from the risk of abandonment.
The licence must include specific quality control provisions
Co-published editorial
Roundtable
A team effort – avoiding trademark troubles in advertising campaigns
Practitioners from China, Europe and the United States discuss the trademark issues involved in advertising, and how counsel can ensure that their voice is heard
