World Trademark Review 17
Features
Impact of economic downturn on brand value
In March 2008 brand valuation consultancy
BrandFinance® published its BrandFinance 500
survey, which ranks the world’s most valuable brands.
As a result of the turmoil in the world economy
BrandFinance updated the results in September 2008,
revealing a significant decline in brand values
The danger of developing a two-tier system
A decision of the European Court of First Instance not
to apply Article 6 ter of the Paris Convention to service
marks is proving controversial. If upheld on appeal,
the decision will open the door to the registration of
national emblems as part of service marks is proving controversial. If upheld on appeal, the decision will open the door to the registration of national emblems as part of service marks something that is prohibited for trademarks.
The challenges of the post-dot age
The proposed launch of new generic top-level
domains in 2009 is likely to cause an unprecedented
shake-up to the domain name system. It will
inevitably cause a considerable burden on rights
owners who will need to reconsider their online
strategies carefully
Protection of well-known marks after Intel
With its Intel ruling, the ECJ has attempted to clarify
dilution law in Europe. However, the decision has been
seen as a blow to the owners of 'superbrands' and appears to favour the common law approach of requiring claimants to prove actual or likely damage
Entrepreneur tug of war
For decades
Entrepreneur Magazine has been fighting
the allegations of small businesses, multinationals and
aggressive critics that its trademarks are generic and
invalid. The magazine's spat with Ernst & Young sets the stakes higher than ever before. WTR investigates
France in flux
The French market for trademark services could be set for a radical overhaul in the very near future. Practitioners and brand owners await the developments with interest
The trademark experts' experts
WTR spoke to a number of leading practitioners in France to find out who they rated as the best in the trademark law business. Here are the names that were mentioned most
The problem with purple
The Cadbury group has been trying to obtain exclusive rights in a shade of purple for chocolate in Australia since 1998
Overcoming Canada's registration hurdle
Non-Canadians may obtain a registration in Canada based on a corresponding registration in the country of origin. However, such applicants should be aware that the registration in the country of origin must be accompanied by use
Columns
Trademark management
The lowdown on trademarks in an insolvency
Trademarks are important to the value of an insolvent business. The business may prove more valuable if split and, if so, its trademarks will be divested separately. This may give rise to practical and legal problems
Counterfeiting perspectives
INTERPOL’s role in the global fight against counterfeiting
Anti-counterfeiting and piracy operations carried out by INTERPOL in various parts of the world have been extremely successful. The INTERPOL IP Rights Programme became truly global when it was deployed in Africa in 2008
The view online
The pitfalls of the revised '.cn' DRP
Nearly three years after the rules governing '.cn' domain name disputes were amended, there appears to have been no significant drop in the number of decisions favourable to complainants. Enforcement of these decisions is another matter entirely–
Co-published editorial
Country correspondents
Internet issues
Benelux - Arnold + Siedsma
The law relating to online infringement
continues to develop rapidly in Benelux.
Among other things, trademark owners
must familiarize themselves with the
latest rulings on the liability of internet
service providers
The liability of online auction website
operators and search engines are among
the most controversial and most
important issues in relation to trademarks
online. So far, the Brazilian courts have
not considered either in much detail.
No keyword advertising case has reached
the Canadian courts yet. However, a
decision on ‘use requirements’ and
various metatags decisions give
indications of how the courts may
approach keyword advertising cases
China is already home to the highest
number of internet users in the world.
Online trademark infringement is a
growing concern and recent cases suggest
that the onus for policing rights falls on
brand owners.
Issues once hotly debated, such as
metatagging, have now been settled in
Germany. However, new practices, in
particular keyword advertising and the
liability of online auction platforms, still
give rise to conflicting court decisions
The Indian courts have had to address many
legal issues arising from the development of
the Internet – from passing off to phishing,
metatagging and jurisdictional matters
Jurisdiction is probably one of the most
important legal matters raised since the
launch of the Internet. A Jerusalem court has
considered this issue in detail and has ruled,
among other things, that a decision from a
foreign court can be enforced in Israel.
Italian courts are still divided over the
criteria to use to establish jurisdiction
over infringement occurring online
Due to a lack of legal framework,
trademark owners find it difficult to
enforce their rights on the Internet – in
particular, on online auction platforms.
However, self-regulation codes have been
developed in order to tackle this issue
Under the Electronic Commerce Act, an
internet service provider is not liable for
the information that it stores unless it has
actual knowledge of the illicit nature of
such information. So far, no court
decision has addressed the issue of the
liability of service providers
Keyword advertising, gripe sites and
phishing can all infringe IP rights. Such
activities generally trigger liability under
unfair competition law in Romania and
require detailed enforcement strategies
Contextual online advertising is big
business in Russia, much of it potentially
infringing. A lack of clear law in this area
makes enforcing trademark rights
almost impossible
Because of the difficulties in identifying
the perpetrators of many acts of online
infringement, IP rights holders
increasingly turn to internet service
providers for redress. However, the Spanish
courts have so far interpreted narrowly the
EU provisions on providers’ liability
As the Internet offers increasing
opportunities for wrong-doing to scammers,
counterfeiters and other infringers in the
online environment, this article reviews
some of the recourses available and best
practices for brand owners
Co-published editorial
Roundtable
Ads, marks and avoiding trouble
Practitioners from the United States and Europe discuss the trademark issues involved in advertising
