World Trademark Review 10
Features
Coming of age
In the past 12 months the Irish Trademarks Act 1996
has been amended for the first time and the Irish
courts have issued an exceptional number of decisions
– all of which translates into a more sophisticated legal
environment for brand owners
Money and mayhem
Brand extensions and celebrity endorsements can be
the easiest route to a rapid increase in revenue. But as
some companies have found out, they are not
guarantees of success
The perils of attraction
As a brand it looks as if Playboy has it all. Strong marks and a
distinctive logo have made the company a licensing powerhouse.
However, this also makes them attractive to counterfeiters
Services market in Turkey flying high
Turkey is shedding its image as a counterfeiting hub
and is proving that it is a serious player in the IP rights
arena. The rapid development of its legal services
market highlights the progress made so far
The strong man at Europe’s door
The trademarks services of the Turkish Patent Institute
have improved considerably over a very short period,
particularly in terms of processing speed. But issues
remain as to the quality of some decisions
Brazil’s franchising boom
With a growing economy and large population, Brazil
is now a key market for rights holders looking to
develop their franchising arms. However, brand
owners seeking to cash in need to be aware of their
rights and obligations
Meeting the global IP challenge
The head of trademarks and related matters at the
World Intellectual Property Organization shares his
views on recent developments and what lies ahead for
the international organization
Philippines making headway
Following a shift of emphasis from the government,
the Philippines has made significant progress to
improve its IP rights protection regime in the past
two to three years
Columns
Brands from the frontline
From the cradle to the grave
While human life expectancy is on the
increase, that of cosmetics trademarks is
dwindling. This requires a new approach
for the trademark lawyers protecting
these brands
Trademark management
Beware the ambiguous licence termination clause
Licensing should create a win-win
situation for both licensor and licensee,
but things can still turn sour. Therefore,
all licensing agreements should contain
unambiguous termination provisions that
clearly define which conduct constitutes a
fundamental breach
The view online
What you need to know about ‘.asia’
Registering your marks as domain names
under ‘.asia’ may not be a necessity from a
marketing point of view, but the risk of
cybersquatting should make you think twice
Counterfeiting perspectives
Fighting counterfeiters in Italy – a step in the right direction
Italy is a hotbed of counterfeiting – in terms
of both production and consumption.
A newly created High Commission may be
what the various Italian anti-counterfeiting
organizations need to coordinate and
rationalize their efforts
Co-published editorial
Country correspondents
Advertising
Australia - Baker & McKenzie
The relationship between trademarks and advertising has its complexities, prompting questions such as when
using another party’s trademark in advertising constitutes an infringement, whether a slogan can be registered
as a mark and what advertising uses will suffice to maintain rights in a mark
Ten years ago, comparative advertising featuring third-party marks was unlawful in Benelux.
The implementation of the EU Comparative Advertising Directive has forced a change in thinking, but the
courts still maintain a relatively strict approach
Advertising in the European Union is heavily regulated – at both general and specific levels. Brand owners and
their counsel need to be familiar with at least the two directives that regulate advertising across all fields
Brand owners must consider the risk of breaching unfair competition law when advertising their products. Luckily
for advertisers, the Supreme Court has issued two decisions that relax Germany’s stringent law in that regard
Two sets of regulatory frameworks govern advertising practices in Italy. One is self-regulatory, the other
legislative. Brand owners looking to promote their products or services in Italy and those advising them need
to be fully aware of both systems
Advertising in Mexico is highly regulated and IP law forms part of the framework governing this area.
Brand owners should familiarize themselves with the rules and protection available before embarking on an
advertising campaign
It is still unclear when use of another party’s mark in advertising is infringing under UK law. That is why the
English courts have referred a number of questions on this issue to the European Court of Justice
The use of another party’s trademark in advertising remains controversial in the online context. The US courts
have yet to come to an agreement as to the legality of practices such as keyword advertising
Co-published editorial
Roundtable
Building the brand
Four experts discuss some of the crucial issues affecting brand creation
and management
