World Trademark Review 37
Features
Inside Track: Estée Lauder and INTA
Gregg Marrazzo, president of INTA and senior vice president and deputy general counsel at The Estée Lauder Companies, reveals how he tackles the challenges of overseeing a multi-brand portfolio
Market focus: United States
The second edition of the WTR 1000 builds on the success of the first, identifying the world’s leading trademark legal services providers. In the first of a regular column, the research team identifies key regional trends and presents a selection of the rankings available in the publication
Industry Awards 2012
This year’s shortlist for the WTR Industry Awards spans
the whole spectrum of trademark-related activity. The
chief quality that nominees share is the ability to predict and react to the latest industry challenges
How brands can leverage intangible asset value
Technology brands dominate the top 10 list of the world’s most valuable brands, and offer some unique insights into how trademarks and brands can be used to increase corporate value
Recovery time – the impact of economic conditions on trademark practice
Since its launch in 2009, the Global Trademark Benchmarking Survey has revealed the brutal effects of the global economic downturn for trademark teams and counsel. This year, there are tentative signs of a rebound. But is all as it seems?
Weathering the storm – assessing the resilience of the franchise model
In 2009, WTR presented an assessment of the franchise model and predictions of how it would fare during the recession. Three years on, the authors revisit the market, consider ing how their predictions fared and what has been learnt about the franchising business
A question of faith – the difficulties facing international brand owners in China
A number of trademark decisions were issued in 2011,
illustrating the difficulties in dealing with bad-faith trademark filings
Getting yourself known in Singapore
During 2011 a number of cases shed light on the interpretation and scope of the statutory protection scheme for well-known marks in Singapore
Defining the European trademark landscape
Last year was a busy one for the Court of Justice of the
European Union, with online intermediary liability, the use of advertising keywords and the role of customs author
ities in relation to counterfeit goods in transit high on its trademark agenda
A matter of principles
It was a busy year in the South African courts, with a number of decisions worth noting for their case law contribution
Gaining consensus on comparative advertising in Brazil
Decisions issued in 2011 indicate that the Brazilian judiciary tends to accept comparative advertising as a way of ensuring free competition for all market players, provided that certain conditions are met
Keywords are always in fashion
Issues surrounding the use of trademarks online featured prominently in 2011’s US case law
Canadian Supreme Court clarifies factors for assessing likelihood of confusion
On May 26 2011 the Supreme Court of Canada released its decision in Masterpiece Inc v Alavida Lifestyles Inc (2011 SCC 27) and, in so doing, clarified important legal principles concerning the interrelationship in Canada between common law trademark rights and those rights which flow from registration. Prior to this decision, very little jurisprudence had dealt with the differences, overlaps and
interrelationships between rights flowing from registration and those existing at common law through use.
A question of character – best practice in managing mascots
Mascots offer a unique opportunity to create a brand
personality. They also require a close relationship with
the marketing department, as well as a careful approach to trademark law
Trademark issues in product placement deals: your must-have clauses
Television, film and online programme producers are offering increased opportunities to position products in their content. However, the practice of product placement is not without legal risk, requiring careful contractual drafting
Proliferation of trademarks – good, bad or just plain inevitable?
While trademark counsel are finding it increasingly hard to clear new product names, the challenge will only grow as marketers seek to create new brands, at new tier levels and in new categories, to meet consumers’ desire for choice
What do Columbus, the Americas and new gTLDs have in common?
As WTR went to press, ICANN had not yet revealed the list of first-round generic top-level domain applications. However, with the window now closed, it is useful to look back at the application process, costs and driving factors – as well as the objections and dispute resolution processes in place for nonapplicants, and the defensive strategies available
