WTR Issue 27

Publicity and image rights

- Garrigues
While national jurisprudence defends the nature of the image right as a personality right with important patrimonial value, economic exploitation can arise from the broad scope for negotiation in comparison to other personality rights. View PDF

- Luzzatto & Luzzatto Patent Attorneys
Those wishing to protect their image or name need to navigate trademark law, issues surrounding freedom of expression, the Privacy Protection Law and Unjust Enrichment Law. View PDF

- Vilau & Mitel
The forthcoming Civil Code will dramatically impact on image rights protection. The protection of image rights was first acknowledged in Romania in the 1991 Constitution, but only as a general and indirect principle (as a limit to the freedom of expression). View PDF

- Bereskin & Parr LLP
In Canada, personality rights enjoy common law and statutory protection, stemming from an individual’s publicity rights (which are proprietary in nature) and the right to privacy (a personal interest). In terms of common law protection, the tort of misappropriation of personality is available to individuals (outside Quebec) who have suffered economic injury as a result of the violation of their publicity rights. View PDF

- Garrigues
Image rights are fundamental rights enshrined in the Spanish Constitution, yet a number of factors hamper effective judicial protection. View PDF

- Luthra & Luthra Law Offices
The need for the Indian legislature to recognise publicity and image rights in a statutory manner has never been greater. View PDF

- Gorodissky & Partners
Publicity and image rights legislation has been adopted, yet there is still a distinct lack of case law. View PDF

- Kangxin Partners PC
Legislation on image rights is becoming increasingly necessary. View PDF

- Bugnion SpA
Italian law provides strong protection for personal names and portraits as trademarks. The relationship between image protection and trademarks is defined by the few articles in the Industrial Property Code that deal specifically with images and personal names in relation to trademarks. View PDF

- Uhthoff Gómez Vega & Uhthoff SC
A number of legal protections are available for the protection of publicity and image rights. View PDF

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WTR Issue 26

Design and trade dress

- Luthra & Luthra Law Offices
An understanding of the relationship between trademark and design law is essential to protecting trade dress in India. View PDF

- Patpol - Patent & Trademark Attorneys
This year saw judgment in one of the first cases dealing with the collision of industrial design rights and 3D trademarks. View PDF

- Dannemann Siemsen
While there is extensive case law protecting trade dress under the Unfair Competition Law, protection under trademark or industrial design law should be sought where possible. View PDF

- Kangxin Partners PC
Different approaches are available for protecting design and trade dress, depending on how established the product is in the Chinese market. View PDF

- Luzzatto & Luzzatto Patent Attorneys
A combination of trademark and design registration is necessary to ensure that products and their packaging obtain the maximum protection in Israel. View PDF

- Gorodissky & Partners
With no specific legal concept of trade dress, brand owners must choose from a range of legal protections on a case-by-case basis. View PDF

- Garrigues
The lack of any specific protection for trade dress makes the accumulation of protection through different types of IP right crucial. View PDF

- Bereskin & Parr LLP
A mixture of trademark and industrial design protection schemes can provide immediate protection for trade dress. View PDF

- Bugnion SpA
Whether obtaining protection for 3D trademarks and designs or utilizing unfair competition laws, a range of protections are available to mark owners in Italy. View PDF

- Garrigues
While there is no legal definition of ‘trade dress’ in Spain, protection can still be obtained through other legal avenues. View PDF

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WTR Issue 25

Domain name management

- Gorodissky & Partners
With the ‘.рф’ domain extension approved, it is important that trademark owners plan registrations now, or risk costly enforcement action later. View PDF

- Garrigues
The management of a well-structured domain name portfolio is at the heart of successful trademark protection and, crucially, will help to prevent costly actions later. View PDF

Spain - Garrigues
The time has come for brand owners to fight back against online infringement. View PDF

- Luzzatto & Luzzatto Patent Attorneys
The IL-DRP plays a significant role in the resolution of domain name disputes through out-of-court proceedings. However, the source of its legal authority and the binding force of its decisions are uncertain. View PDF

- Bereskin & Parr LLP
Use of a ‘.ca’ domain is often expected by Canadian consumers, but there are obstacles to registration and cybersquatting remains an issue. View PDF

Italy - Bugnion SpA
A number of issues are raised by the registration of ‘.it’ domain names, but these need to be overcome as ownership of domain names is crucial to obtain IP rights that can be defended against third parties. View PDF

- Dannemann Siemsen
There are a number of obstacles for foreign companies to overcome when registering a ‘.br’ domain name. View PDF

India - Luthra & Luthra Law Offices
With more companies doing business in India, ‘.in’ domain names are coming under increasing demand. View PDF

- Vilau & Mitel
While the Romanian domain name registry has assumed less responsibility than similar bodies in other jurisdictions, brand owners have a number of legal tools to protect their interests online. View PDF

China - Kangxin Partners PC
It is not normally feasible to register all possible domain name variations to protect your trademark, so brand owners need to carefully consider their selection methodology. View PDF

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WTR Issue 24

Anti-counterfeiting

Canada - Bereskin & Parr LLP
Despite a lack of specific remedies for counterfeiting in Canada, there are still options for brand owners. View PDF

Italy - Bugnion SpA
With Italy’s policing bodies boasting internal departments to investigate IP infringement, and a range of actions possible, the country is well-geared to tackle the counterfeiting threat. However, brand owners must also ensure they police the threat themselves. View PDF

Spain - Garrigues
The Spanish spend an average of €285 million on counterfeit goods. While this poses a challenge to trademark owners, protections are available through both Customs and the courts. View PDF

Israel - Luzzatto & Luzzatto Patent Attorneys
There are a number of enforcement procedures open to brand owners to enforce their rights, but the selection process is critical to success. View PDF

Brazil - Dannemann Siemsen Advogados
Although the country lacks both a centralized IP rights database and a standard procedure for border seizures, a range of anti-counterfeiting measures are available in Brazil. View PDF

Russia - Gorodissky & Partners
While few counterfeit goods actually originate in Russia, brand owners need to be aware of the protections in place to guard against the impact of infringements. View PDF

Romania - Vilau & Mitel
In the face of increased levels of counterfeiting, Romanian law provides a range of important protections for brand owners. View PDF

Portugal - Garrigues
Over the last few years, both Customs and the courts have become more proactive in the fight against fake goods, with the new Industrial Property Code set to provide further clarification on the extent of IP rights. View PDF

China - Kangxin Partners PC
Like the manager of a professional sports team, trademark owners bear the pain and glory for their teams’ success and failures. However, China’s trademark laws and enforcement methods can help you turn that ‘L’ into a ‘W’. View PDF

India - Luthra & Luthra Law Offices
A number of recent cases highlight the anti-counterfeit protections brand owners can draw on. View PDF

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WTR Issue 23

Well-known and famous marks

Spain - Garrigues
Famous and well-known marks are afforded extensive protection in Spain, but while ‘well-known’ and ‘reputation’ denote distinct legal concepts, English-speaking practitioners who are familiar with the Community trademark system need to be careful they are not misled by the Spanish terms for such marks. View PDF

Russia - Gorodissky & Partners
The protection of well-known and famous marks has long been disputed under Russian law, with the process for registering a mark as well known challenging for brand owners. View PDF

China - Kangxin Partners PC
China has gradually enhanced the protection of well-known marks, but brand owners need to ensure that they file for recognition when entering into legal action. View PDF

Portugal - Garrigues
The scope of traditional trademark protection is expanding with the recognition of well-known marks and marks with a reputation. Despite there being no legal definitions of these concepts, Portuguese doctrine and jurisprudence are working towards solutions which will enable owners of such marks to defend their rights. View PDF

Israel - Luzzatto & Luzzatto Patent Attorneys
There is a long tradition of protection for well-known marks in Israel, but trademark owners need to ensure that they are fully exploiting the advantages of the system. View PDF

Italy - Bugnion SpA
While Italian legislation does not define what constitutes a well-known mark, their treatment as marks that ‘enjoy a reputation’ means that they enjoy wide protection. View PDF

Benelux - SteinhauserRijsdijk Advocaten
The framework of protection for well-known and famous trademarks stems from existing Benelux legislation. Recent decisions suggest that this system, as transposed into EU legislation and elaborated by further case law, gives famous and well-known trademarks even greater protection than before. View PDF

Canada - Bereskin & Parr LLP
While courts take account of the fame of a mark when assessing the likelihood of confusion, all the surrounding circumstances are considered – including evidence of consumer confusion and the connection between the goods and services of the interested parties. View PDF

Norway - Zacco
Well-known trademarks in Norway are protected under the Trademarks Act and, to some degree, the Marketing Act, which requires traders to follow good business practice in their transactions with each other. View PDF

Brazil - Dannemann Siemsen Advogados
A recent decision has affirmed the principle that famous marks which receive recognition as highly reputed marks following the BPTO procedure deserve protection in all fields of activity, regardless of the possibility of confusion. View PDF

Romania - Vilau & Mitel
While legislation does recognize marks which have gained fame, the concept is not defined or explained in the law or governing rules. View PDF

Mexico - Olivares & Cia
A recent marketing campaign highlights some of the intricacies inherent in Mexico’s trademark legislation. View PDF

Denmark - Zacco
In Denmark, it is recognized that well-known or famous marks require protection which is broader than merely direct competition. However, to enjoy extended protection, documentation must be submitted which confirms that the relevant consumers have a general and broad knowledge of the mark. View PDF

India - Luthra & Luthra Law Offices
While the courts are applying statutory provisions that afford protection to well-known marks, the lack of guidance on the evidence required to prove that a mark is well known means that brand owners need to rely on judicial precedents in their actions. View PDF

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WTR Issue 22

Advertising

Norway - Zacco
Norwegian law offers several means of enforcement against unfair and comparative advertising. This article analyzes the options available and provides an overview of recent amendments to the Marketing Control Act. View PDF

Romania - Vilau & Mitel
A boom in advertising over the past 10 years is reflected in the development of related legislation. However, there is limited case law from the courts in this field due to the significant enforcement powers of regulatory bodies. View PDF

Brazil - Dannemann Siemsen Advogados
Brazil’s new fondness for comparative ads has highlighted ambiguities in the legal regime in this area. However, there is considerably more certainty over ambush marketing: the country’s selection as host of the 2014 World Cup and the 2016 Olympics have already prompted bills on the subject. View PDF

Israel - Luzzatto & Luzzatto Patent Attorneys
Is the online use of a third-party mark to link through to competitor products lawful? Case history in Israel to date shows an increasing leniency towards this activity - Oren Mandler and Kfir Luzzatto analyze the reasons why. View PDF

Portugal - Garrigues
The legislation on unfair and comparative advertising has its roots in the rules on unfair competition. The introduction of changes to the Advertising Code in 1998 clarified the law by implementing the EU Comparative Advertising Directive. View PDF

India - Luthra & Luthra Law Offices
In a landmark decision, the High Court of Madras has attempted to tighten the rules on comparative advertising. However, the ruling may have opened the door to inconsistency in the interpretation of the law in this area. View PDF

Benelux - SteinhauserRijsdijk Advocaten
The ECJ’s decision in the O2 Case has clarified key issues unique to Benelux. However, inconsistencies in approach are still apparent. View PDF

Canada - Bereskin & Parr LLP
Facebook is bringing in new privacy measures in response to criticism in Canada over its handling of personal data. The new approach looks likely to have an impact on mark owners' advertising strategies. View PDF

Spain - Garrigues
The sprawling legislative regime governing advertising, along with a fragmented administrative system, means that practitioners must stay on their toes when trying to determine whether an advertisement is permitted in Spain. View PDF

China - Kangxin Partners PC
Often the best way to make a product stand out is to compare it to competing products on the market. However, while powerful, comparative advertising treads a fine legal line between good business and unfair competition. View PDF

Mexico - Olivares & Cia
A recent high-profile marketing initiative by a Mexican pharmaceutical company appears to be a clear example of unfair competition. This article puts the campaign in context and looks at the likely outcome for the advertiser. View PDF

Italy - Bugnion SpA, Studio Legale Caneva E Associati
Advertisers must take into consideration provisions of the Consumer Code and Legislative Decree 145/2007 when devising a marketing campaign. Any breach of the rules could lead to the advertisement being suspended and a fine. View PDF

Russia - Gorodissky & Partners
Russian advertising law is not extensive and can be ambiguous, but an analysis of recent cases reveals that the legislation is, for the most part, interpreted intuitively. View PDF

Denmark - Zacco
While a fully joined-up European advertising policy remains a dream, at least the Danish system has been updated to provide comprehensive coverage. Moreover, individuals have a strong ally against unfair advertising in the shape of the Consumer Ombudsman. View PDF

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WTR Issue 21

Pharmaceutical trademarks

Israel - Luzzatto & Luzzatto Patent Attorneys
Substantive legislative changes have opened the door to the parallel importation of pharmaceuticals in Israel. Parallel importation cannot be prohibited, unless the goods undergo substantial changes such that they can no longer be attributed to the mark owner. View PDF

Spain - Garrigues Abogados & Asesores Tributarios
Spanish practice on pharmaceutical trademarks reflects recent developments at EU level. This article examines the relationship between such marks and international non-proprietary names and the criteria for determining the relevant public. View PDF

Russia - Gorodissky & Partners
Part IV of the new Civil Code establishes the basic regime for the protection of pharmaceutical trademarks in Russia. Rights holders must also be aware of legislation governing the use of medicines, and practice at the Patent and Trademark Office and the courts. View PDF

Benelux - SteinhauserRijsdijk Advocaten
The main issues presented by pharmaceutical trademarks in Benelux concern their descriptiveness, the relevant public and parallel imports View PDF

China - Kangxin Partners PC
As in most other jurisdictions, in China pharmaceutical companies must navigate a dual system of registration and approval of their trademarks and the commercial names of their products. View PDF

India - Luthra & Luthra Law Offices
The Indian courts have adopted the principle of trans-border reputation to protect foreign pharmaceutical marks that have not been registered in India. View PDF

Portugal - Garrigues Abogados & Asesores Tributarios
Pharmaceutical trademarks in Portugal must meet both the requirements for registration as a trademark and those for eligibility as a medicine name, which are much stricter. View PDF

Brazil - Dannemann Siemsen Advogados
Trade dress issues in relation to pharmaceutical products have become more apparent in Brazil as trade in generic drugs increases. Luckily, local law provides adequate protection against imitation. View PDF

Canada - Bereskin & Parr LLP
Many trademark challenges are specific to the pharmaceutical industry. Issues include whether clinical trials can be considered trademark use in Canada – a prerequisite to trademark registration – and the limited extent to which pharmaceutical trademarks can be used in advertising. View PDF

Romania - Vilau & Mitel
The EU courts have wrestled with the likelihood of confusion test for pharmaceutical marks over the years, often coming to seemingly conflicting conclusions. The Romanian courts, on the other hand, have preferred to keep things simple and have taken a more consistent line. View PDF

Mexico - Olivares & Cia
A drug marketing authorization can be granted only if the name applied for varies by at least three letters from previously registered names. However, this rule is now being challenged View PDF

Italy - Bugnion SpA
Inconsistencies in approach to the test of likelihood of confusion make it difficult to evaluate in advance the risks associated with adopting a pharmaceutical trademark in Italy. View PDF

USA - King & Spalding LLP
Pharmaceutical trademarks must clear a number of hurdles, including distinct and independent reviews by the US Patent and Trademark Office and the Food and Drug Administration. View PDF

Denmark - Zacco
As with all EU member states, Denmark tightly regulates the use of pharmaceutical trademarks. This analysis examines how Denmark has aligned itself with the EU model. View PDF

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WTR Issue 20

Non-traditional trademarks

Mexico - Olivares & Cia
The definition of ‘trademark’ in Mexican law is restricted to signs that can be perceived visually. In practice, the Trademark Office narrows this definition further – for instance, by not granting registration to colours unless they are combined with other distinctive elements. View PDF

- Garrigues Abogados & Asesores Tributarios, Garrigues Cunha Ferreira
Although a number of non-traditional signs are protectable as trademarks under EU law, Portuguese law and practice are rather more restrictive. View PDF

Portugal - Garrigues Abogados & Asesores Tributarios, Garrigues Cunha Ferreira
Although a number of non-traditional signs are protectable as trademarks under EU law, Portuguese law and practice are rather more restrictive. View PDF

Spain - Garrigues Abogados & Asesores Tributarios
Spanish trademark law and practice are bound by EU regulations and case law. However, the Spanish Patent and Trademark Office is even more reluctant than the EU trademark bodies to register unconventional marks. View PDF

USA - Garrigues Abogados & Asesores Tributarios
Spanish trademark law and practice are bound by EU regulations and case law. However, the Spanish Patent and Trademark Office is even more reluctant than the EU trademark bodies to register unconventional marks. View PDF

Benelux - SteinhauserRijsdijk Advocaten
The protection afforded to non-traditional trademarks in Benelux is governed in large part by EU regulations and case law. However, Benelux courts are often prepared to grant protection where the EU instances are not. View PDF

Russia - Gorodissky & Partners
Part IV of Russia’s Civil Code provides for the registration of an array of non-traditional trademarks. But graphical representation may be an issue in some cases. View PDF

India - Luthra & Luthra Law Offices
The Indian Intellectual Property Office is putting together a manual on trademark practice and procedure which provides thorough guidelines on the requirements to register non-traditional marks. This article examines the latest proposals in detail. View PDF

Norway - Zacco
Non-traditional marks are, by and large, protectable in Norway, with the restrictions imposed across the European Union also applicable in this non-EU country. View PDF

Romania - Vilau & Mitel
Even though the traditional view that trademarks can consist only of visual signs lingers in Romania, shapes, sounds and colour combinations may be registered as trademarks. Case law regarding other non-traditional marks, however, remains limited. View PDF

Israel - Luzzatto & Luzzatto Patent Attorneys
Israeli law recognizes a broad range of signs as being registrable as trademarks. However, the Trademark Office’s practice on this matter is rather restrictive. View PDF

Brazil - Dannemann Siemsen Advogados
Although the definition of ‘trademark’ under the Industrial Property Law is restrictive, most non-traditional signs can enjoy a degree of protection in Brazil View PDF

Denmark - Zacco
In principle, any sign that is distinctive and can be represented graphically may be registered as a trademark in Denmark, but these requirements often prove to be insurmountable hurdles for non-traditional marks. View PDF

Italy - Bugnion SpA
The conservative approach of the Patent and Trademark Office and the courts to the protection of non-traditional trademarks, as well as limited national case law on the issue, mean that much remains to be clarified with regard to the scope of protection of such signs. View PDF

Canada - Bereskin & Parr LLP
Three-dimensional shapes can be protected under trademark, industrial design and/or copyright law in Canada. To obtain immediate and comprehensive rights, brand owners should consider an integrated strategy combining all three protection schemes. View PDF

USA - King & Spalding LLP
Non-traditional signs enjoy broad protection in the United States as long as they can function as trademarks. Nonetheless, proving acquired distinctiveness may be challenging for those signs, such as product designs, that lack inherent distinctiveness View PDF

China - Kangxin Partners PC
Three-dimensional trademarks can be registered in China as long as they are distinctive and non-functional. However, trademark owners should be aware that similar shapes may already have been registered as patent designs. View PDF

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WTR Issue 19

Trademark enforcement

Italy - Bugnion SpA
Italian statutory law provides all the tools necessary for the effective enforcement of trademark rights. This is further enhanced by the existence of specialized IP sections within the courts. However, some peculiarities of the Italian system mean that the courts are swamped by cases challenging the validity of registered trademarks. View PDF

European union - Clifford Chance LLP
EU legislation provides a number of means by which IP rights may be enforced. In addition, various proposals and initiatives are pending in relation to criminal sanctions and the fight against counterfeiting and piracy. View PDF

China - Kangxin Partners PC
The issue of how best to protect trademark rights in China is one faced by many multinational companies. This article aims to provide some tips on successful enforcement in China. View PDF

Israel - Luzzatto & Luzzatto Patent Attorneys
Enforcing trademark rights in Israel can be done through the usual channels of the courts, the police and Customs. Filing petitions before the registrar of trademarks, particularly in cases of conflicting applications, should also be considered. View PDF

Norway - Zacco
Trademark owners seeking to enforce their rights in Norway should typically start civil proceedings. However, mark owners should also consider applying for customs surveillance and should make use of alternative resolution bodies for solving unfair competition and domain name disputes View PDF

USA - King & Spalding LLP
When it comes to enforcing their rights in the United States, mark owners can choose between a vast array of tools, including arbitration, litigation and anti-counterfeiting actions. View PDF

Romania - Vilau & Mitel
The debate surrounding the conflict between trademarks and trade names is not new in Romania. However, case law is developing, with certain courts finding that a trade name which infringes an earlier registered mark must be amended View PDF

Russia - Gorodissky & Partners
Determining which court has jurisdiction over a particular dispute is crucial for IP rights owners. Russian law provides a number of criteria to answer this question, but uncertainty remains as to certain kinds of IP cases View PDF

Denmark - Zacco
Mark owners seeking a preliminary injunction must file their request with a local bailiff’s court while full infringement proceedings should be filed with the Maritime and Commercial Court – a specialized court. View PDF

India - Luthra & Luthra Law Offices
The enforcement of IP rights in India remains inconsistent. While the Indian judiciary regularly displays remarkable flexibility with regard to protection, the enforcement of IP laws by law enforcement agencies leaves much to be desired View PDF

Benelux - SteinhauserVandenBrinkHeeziusRijsdijk Advocaten
Trademark owners have several means of enforcing their rights in Benelux. In addition, the scope and effectiveness of enforcement actions have increased since the implementation of the IP Rights Enforcement Directive. View PDF

Brazil - Dannemann Siemsen Advogados
New enforcement tools in Brazil are encouraging trademark owners to litigate to protect their rights and claim monetary compensation for infringement View PDF

Canada - Bereskin & Parr LLP
Trademark rights can be enforced in Canada on the basis of both registered and unregistered rights, under the federal statute and the common law tort of passing off. Remedies include interlocutory injunctive relief, but proving irreparable harm often presents a tremendous challenge. View PDF

Spain - Garrigues Abogados & Asesores Tributarios, Office for Harmonization in the Internal Market (OHIM)
Before the entry into force of the Trademarks Act in 2001, trademark owners struggled to enforce their rights before the courts. Further amendments were introduced by Act 19/2006, which implemented the IP Rights Enforcement Directive. View PDF

Germany - Jonas Rechtsanwaltsgesellschaft mbH
Germany’s long tradition of trademark right enforcement ensures that brand owners are well protected. However, the recent implementation of the EU Unfair Commercial Practices Directive and the IP Rights Enforcement Directive introduced some small but noteworthy changes View PDF

Portugal - Garrigues Abogados & Asesores Tributarios
The implementation of the IP Rights Enforcement Directive in Portugal represented a turning point in the country’s approach to enforcement. However, one year on, many questions remain unanswered View PDF

Mexico - Olivares & Cia
In Mexico trademark rights are enforced mainly through the Trademark Office. The enforcement of famous and notorious marks is governed by specific rules. View PDF

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WTR Issue 18

Trademark prosecution and registration strategies

Russia - Gorodissky & Partners
Russian legislation for trademark protection has certain peculiarities that need to be taken into account when planning to enter the Russian market and choosing a strategy for trademark protection. View PDF

Benelux - SteinhauserVandenBrinkHeeziusRijsdijk Advocaten
Knowledge of the law is one thing, but more needs to be considered when thinking of adopting a new trademark in Benelux. In this article some strategic considerations are discussed. View PDF

Germany - Jonas Rechtsanwaltsgesellschaft mbH
Germany is Europe’s largest economy, so careful consideration should be given as to how best to protect trademarks in this key jurisdiction. View PDF

Italy - Bugnion SpA
Trademark prosecution in Italy differs strikingly from most other systems. The process will significantly improve once the opposition system, set out in the Trademark Law of 1999, is finally implemented. View PDF

- Garrigues Abogados & Asesores Tributarios, Garrigues Cunha Ferreira
A lack of objective guidance from the Portuguese Trademark Office and conflicting decisions from the courts with regard to the classification of goods and services create difficulties for IP rights owners seeking to protect their rights in Portugal. View PDF

Portugal - Garrigues Abogados & Asesores Tributarios, Garrigues Cunha Ferreira
A lack of objective guidance from the Portuguese Trademark Office and conflicting decisions from the courts with regard to the classification of goods and services create difficulties for IP rights owners seeking to protect their rights in Portugal. View PDF

Romania - Vilau & Mitel
While Romania has a longstanding tradition of protecting trademark rights, issues relating to its accession to the European Union make the development of registration strategies tricky. View PDF

Israel - Luzzatto & Luzzatto Patent Attorneys
Marks that are similar and were filed close together in time are normally examined by the registrar of trademarks who will render a decision based, among other things, on the good faith of the applicants and the extent of use of the marks at issue. View PDF

Norway - Zacco
Despite not being part of the European Union, Norway’s registration procedures are, for the most part, aligned with those in place across Europe. However, there are some differences so rights holders must plan their filing strategies with care. View PDF

China - Kangxin Partners PC
Brand owners seeking to register their marks in China need to be aware of the delays at the Trademark Office, the quirks of the classification system and the pitfalls of transliterating names into Chinese characters. View PDF

Brazil - Dannemann Siemsen Advogados
Trademark prosecution in Brazil presents specific challenges – the most obvious and difficult of which is the substantial backlog at the Trademark Office. View PDF

Spain - Garrigues Abogados & Asesores Tributarios
Selecting the goods and/or services to be applied for in a trademark application is a more complex task than meets the eye. This is particularly true in Spain where the trademark office's practice differs from that of other EU IP offices. View PDF

USA - King & Spalding LLP
While trademarks are protected under both common law and federal law in the United States, obtaining a trademark registration offers unparallelled advantages. But brand owners should beware of the quirks of the US registration system. View PDF

Mexico - Olivares & Cia
Protecting trademark rights in Mexico poses a number of challenges. The law sets out strict requirements on the types of signs that are capable of registration and the procedures differ in many ways from those in place in other jurisdictions. View PDF

Canada - Bereskin & Parr LLP
Trademark prosecution in Canada presents many unique features, including some disparities with the systems in place in its neighbour – the United States. View PDF

European union - Clifford Chance LLP
A Community trademark offers the considerable advantage of protection in the European Union’s 27 member states. However, the Community system still presents a number of drawbacks that may lead mark owners to prefer other registration systems. View PDF

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WTR Issue 17

Internet issues

Benelux - SteinhauserVandenBrinkHeeziusRijsdijk Advocaten
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 View PDF

China - Kangxin Partners PC
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. View PDF

Romania - Vilau & Mitel
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 View PDF

Canada - Bereskin & Parr
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 View PDF

Russia - Gorodissky & Partners
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 View PDF

Mexico - Olivares & Cia
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 View PDF

Brazil - Dannemann Siemsen Advogados
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. View PDF

Israel - Luzzatto & Luzzatto Patent Attorneys
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. View PDF

Spain - Garrigues Abogados & Asesores Tributarios
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 View PDF

USA - King & Spalding LLP
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 View PDF

Portugal - Garrigues Abogados & Asesores Tributarios
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 View PDF

India - Anand & Anand
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 View PDF

Italy - Bugnion SpA
Italian courts are still divided over the criteria to use to establish jurisdiction over infringement occurring online View PDF

Germany - Jonas Rechtsanwaltsgesellschaft mbH
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 View PDF

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WTR Issue 16

Protection of unregistered trademarks and other commercial signs

Italy - Bugnion SpA
The Italian legal system grants protection to various unregistered signs, but in practice protection is limited by the heavy burden of proof imposed on the owners of such signs and the somewhat unpredictable application of the law by the courts View PDF

Germany - Jonas Rechtsanwaltsgesellschaft mbH
Unregistered trademarks are protectable in Germany as long as they function as trademarks and have acquired a reputation through use. Other commercial signs may also be protected, with the distinctiveness requirements varying depending on the type of right sought View PDF

India - Anand & Anand
India allows a rights holder to enforce a mark on the basis of registration, use and reputation. Many remedies are available to the owners of unregistered trademarks View PDF

Romania - Vilau & Mitel
Unregistered trademarks are protected under Romanian law if they are recognized as well known. Other commercial signs, such as trade names and company logos, enjoy some level of protection under trademark and unfair competition law View PDF

Canada - Bereskin & Parr
Unregistered trademarks, trade names and other business signs are protected in Canada under the common law action of passing off. Although this grants unregistered rights extensive protection, passing off carries a heavy burden of proof View PDF

China - Kangxin Partners PC
Although China is a civil law country, unregistered trademarks may be protected as prior rights under the Trademark Law and the Anti-unfair Competition Law View PDF

Mexico - Olivares & Cia
While trade dress rights may be enforced against third parties under unfair competition provisions, the scope of protection afforded to most unregistered rights is limited to serving as a defence against claims made by a later registrant of a similar or identical mark View PDF

Benelux - SteinhauserVandenBrinkHeeziusRijsdijk Advocaten
Commercial signs such as trade names, well-known unregistered marks and domain names enjoy some protection under either the Benelux Convention on Intellectual Property or national laws of Benelux member states View PDF

USA - King & Spalding LLP
Trademark and commercial name protection in the United States is multifaceted and extends to all trademarks, commercial signs, trade names and trade dress/get-up acquired in good faith whether registered or not. View PDF

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WTR Issue 15

Publicity and image rights

Germany - Jonas Rechtsanwaltsgesellschaft mbH
The Federal Court of Justice has recently introduced a new graduated concept of protection under which the greater the informative value of the image or the social relevance of the incident reported, the more the protection of the personal rights must take second place View PDF

Mexico - Olivares & Cia
The new Privacy Law, which came into effect in 2006, enhances the protection of the rights to privacy and publicity under the Federal Civil Code and the Copyright Law View PDF

Italy - Bugnion SpA
In Italy, publicity and image rights are governed by the Civil Code and the Copyright Law. Consent to use an individual’s image must be obtained, especially where the image is exploited for commercial purposes View PDF

China - Kangxin Partners PC
Portrait rights in China are not absolute: fair use of a personality’s image is allowed, as long as the person making the unauthorized use exercises care in the manner in which the portrait is displayed View PDF

India - Anand & Anand
India is yet to recognize the rights of publicity and image as distinct legal rights. However, individuals may rely on an accepted framework of IP and other rights to prevent the unauthorized exploitation of their names and images View PDF

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WTR Issue 14

Design and trade dress

Germany - Jonas Rechtsanwaltsgesellschaft mbH
As in most jurisdictions, the appearance of a product may be protected in Germany under various IP laws and unfair competition law. The courts, in particular the Supreme Court, have developed extensive case law in relation to trade dress protection View PDF

Mexico - Olivares & Cia
Mexican law provides protection to designs used as trade dress for both products and services by virtue of industrial design, copyright, trademark or unfair competition law View PDF

European union - Clifford Chance LLP
Protection for designs and trade dress in the European Union is possible through various means. This article looks at the key systems available and highlights the benefits of each View PDF

Italy - Bugnion SpA, Studio Legale Caneva E Associati
While trade dress is not recognized as such by Italian law, the appearance of a product may be protected under trademark law, model and design law, copyright law and unfair competition law View PDF

China - Kangxin Partners PC
Trade dress can be registered in China as trademarks or design patents. It is more commonly protected under the Anti-unfair Competition Law. However, enforcing rights under that statute may prove to be a higher hurdle to negotiate than enforcing registered rights as it requires evidence that the trade dress is unique and applies to a famous commodity View PDF

India - Anand & Anand
Trade dress law is protected under common law principles in India. Recent case law has addressed some important issues, but divisions remain View PDF

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WTR Issue 13

Pharmaceutical trademarks

Mexico - Olivares & Cia
The registration of pharmaceutical trademarks in Mexico may be problematic as there are no clear-cut examination criteria to assess similarity with prior marks. In addition, the body charged with granting marketing authorization has no obligation to assess new applications against existing trademark registrations View PDF

France - Inlex Conseil
The health industry has always been a sensitive sector, including in relation to trademarks. The current practice for the assessment of pharmaceutical trademarks is the result of a long evolution of French case law View PDF

Germany - Jonas Rechtsanwaltsgesellschaft mbH
Unlike marks in most other business fields, pharmaceutical trademarks are affected by regulatory law. In Germany, this influence accompanies the trademark throughout its existence. The owners of pharmaceutical trademarks therefore face a number of specific questions – not only when registering a trademark, but also in connection with maintaining and defending it View PDF

China - Kangxin Partners PC
China, the most populous country in the world, has a median age that continues to rise. If it can maintain its strong economic growth, building on the success of the past decade, the long-term prospects for pharmaceutical companies in China will be very promising View PDF

Australia - Baker & McKenzie
The sale of pharmaceutical products online is an increasing problem. Various Australian statutes may help in controlling such trade View PDF

India - Anand & Anand
Pharmaceutical trademarks have been the subject of much debate, discussion and case law in India. This article runs through some of the key decisions View PDF

Italy - Bugnion SpA
The Italian courts have issued a number of rulings on pharmaceutical trademarks in recent years. This article looks at a selection of key rulings in this field View PDF

European union - Clifford Chance LLP
With public health and safety issues arising from pharmaceuticals hitting the headlines daily, it is hardly surprising that these concerns have permeated the assessment of whether a new pharmaceutical trademark will cause confusion. EU pharmaceutical trademarks undergo two separate assessments on this front View PDF

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WTR Issue 12

Anti-counterfeiting

France - Inlex Conseil
A new law enacted on October 29 2007 brings the French IP provisions into line with the EU IP Rights Enforcement Directive. The new provisions, some of which go beyond the directive’s requirements, bring significant changes to IP practice in France View PDF

European union - Clifford Chance LLP
Seizures by Customs in the European Union increased by 40% between 2005 and 2006 and are continuing to grow. Although legislation has been introduced to tackle counterfeiting across the European Union, far more needs to be done to prevent the initial production and sale of infringing goods View PDF

Mexico - Uhthoff Gomez Vega & Uhthoff SC
Mexico is a large consumer and producer of counterfeits. However, this should not discourage brand owners from devising anti-counterfeiting programmes, as Mexican legislation provides the necessary tools View PDF

Italy - LES database
Italy enjoys the dubious honour of being at the top of the list of producers and consumers of counterfeit goods in Europe. However, recent efforts may change this situation View PDF

Benelux - SteinhauserHeeziusRijsdijk Advocaten
Until relatively recently, the Dutch authorities had a somewhat laissez-faire attitude to counterfeiting. The belief was that rights holders should protect their economic interests themselves. Now, though, attitudes have started to change View PDF

India - Anand & Anand
One of the fastest-growing industries in India, the software and IT industry, is also one of the most affected by counterfeiting and piracy View PDF

Australia - Baker & McKenzie
Mark owners seeking to protect their rights against counterfeiters should follow the money trail. New rules on asset freezing orders in Australia will help them along the way View PDF

China - Kangxin Partners PC
Thorough investigations and careful evidence collection are at the heart of any successful anti-counterfeiting campaign in China. But flexibility is also key View PDF

Germany - Jonas Rechtsanwaltsgesellschaft mbH
A comprehensive legal framework and efficient enforcement by the courts mean that protection against counterfeiting is very effective in Germany. However, the onus is on brand owners to protect their rights View PDF

USA - Knobbe Martens Olson & Bear LLP
Although the United States provides a good legal framework to fight counterfeiting, depending on the legal system alone is often not enough. US brand owners must be diligent in the prevention of the manufacture and distribution of counterfeit products View PDF

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WTR Issue 11

Well-known and famous trademarks

Australia - Baker & McKenzie
Well-known and famous marks enjoy increasingly good protection Down Under, even though only one provision mentions them expressly View PDF

France - Inlex Conseil
Protecting trademarks that enjoy a reputation is a sensitive aspect of trademark law practice and doing so in France is no exception. A review of both the statutes and case law is needed to draw a clear picture of the French approach View PDF

USA - Oblon Spivak McClelland Maier & Neustadt PC
US federal trademark law was amended on October 6 2006 by the Trademark Dilution Revision Act. Rulings under the new law trickled in during 2007, of which the most noteworthy is the decision of the US Court of Appeals for the Fourth Circuit in a commercial parody case involving Louis Vuitton View PDF

Italy - Jacobacci & Partners
Italian legislation provides a good framework for the protection of well-known marks. However, there has been limited case law so far, leaving some uncertainty as to how to determine when ‘unfair advantage’ or ‘detriment’ to the well-known mark occurs View PDF

Mexico - Uhthoff Gomez Vega & Uhthoff SC
Following an amendment to the law in 2005, procedures allowing rights holders to apply for declarations that their marks are famous or notorious in Mexico finally came into effect in late 2007. Rights holders and their advisers must be aware of the important distinctions between these two types of mark View PDF

Benelux - SteinhauserHeeziusRijsdijk Advocaten
Through a combination of local laws, EU legislation and international measures, famous marks are well protected in Benelux. Over the past few years, the courts and the Benelux Office of Intellectual Property have strengthened well-known mark owners’ rights yet further View PDF

European union - Clifford Chance LLP
Both the First Trademarks Directive and the Community Trademark Regulation afford protection to well-known and famous trademarks. Uncertainty remains as to the definition of some key terms – for instance as to whether ‘well-known marks’ and ‘marks with a reputation’ have the same meaning View PDF

Germany - Jonas Rechtsanwaltsgesellschaft mbH
Germany has a long history of offering strong protection to well-known and famous marks. As the courts have developed the law in this area, they have slowly relaxed the criteria for recognition as a well-known mark. These days, good survey evidence can mean that even the most descriptive of marks may be classified as well known View PDF

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WTR Issue 10

Advertising

Italy - Jacobacci & Partners
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 View PDF

European union - Clifford Chance LLP
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 View PDF

USA - Brinks Hofer Gilson & Lione
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 View PDF

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 View PDF

Mexico - Uhthoff Gomez Vega & Uhthoff SC
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 View PDF

England - Rouse & Co International
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 View PDF

Germany - Jonas Rechtsanwaltsgesellschaft mbH
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 View PDF

Benelux - SteinhauserHeeziusRijsdijk Advocaten
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 View PDF

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WTR Issue 09

Domain name management

USA - Morgan Lewis
With the emergence of new practices such as domain name tasting, brand owners must reinforce their programmes for procuring, administering and monitoring domain name registrations. Such measures are an essential counterpart of any thorough brand protection regime View PDF

Benelux - SteinhauserHeeziusRijsdijk Advocaten
In order to ensure efficient domain name management in the jurisdictions making up Benelux, mark owners must take into account both general rules and the specifics of local case law View PDF

Mexico - Uhthoff Gomez Vega & Uhthoff SC
Registration of domain names in the ‘.mx’ country-code top-level domain is rapidly gaining in popularity. Parties looking to register domain names or defend their interests in Mexico need to look carefully at the IP assets they hold and be aware of additional types of protection that may be available View PDF

Australia - Baker & McKenzie
The management and regulation of ‘.au’ domain names are subject to a number of peculiarities that are commonly misunderstood. Among other things, there are strict eligibility requirements, prohibitions on sale and limitations on transfer to take into consideration. Key differences between the policy governing ‘.au’ domain name disputes and that used for generic top-level domains also exist View PDF

Germany - Jonas Rechtsanwaltsgesellschaft mbH
The management of domain names in Germany, as in all other jurisdictions, requires careful planning and a detailed knowledge of the peculiarities of the domain name registration and protection systems. Notably, alternative dispute resolution does not exist in Germany; however, the use of court procedures can quickly stop cybersquatters in their tracks View PDF

European union - Clifford Chance LLP
With over 2.4 million ‘.eu’ domain names registered since its launch a year ago, the ‘.eu’ domain is certainly proving popular. Despite early teething problems the sunrise periods gave rights holders the opportunity to register their key domain names. The alternative dispute resolution procedure established provides a further mechanism through which rights holders can enforce their IP rights View PDF

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WTR Issue 08

The tradition of non-traditional trademarks in Germany

Germany - Jonas Rechtsanwaltsgesellschaft mbH
Even before the implementation of the EU First Trad emarks Directive in Germany in 1995, the German courts and the Patent and Trademark Office had begun to establish a tradition of registering and defending non-traditional marks. However, the use of such marks has challenged German trademark practice and raised new questions to be answered by the courts View PDF

Non-traditional trademarks in the Community trademark system

European union - Clifford Chance LLP
Modern EU trademark law offers, in theory, the possibility of registering shape, sound or colour marks, but applicants will face hurdles such as graphical representation and proving acquired distinctiveness View PDF

Benelux approach to non-traditional marks

Benelux - SteinhauserVandenBrinkHeeziusRijsdijk Advocaten
The Benelux countries, Belgium, the Netherlands and Luxembourg, have uniform trademark and design laws, and a harmonized approach to the protection of non-traditional marks. As members of the European Union, the practice of the Benelux countries in this area is also highly influenced by EU law View PDF

Italy's cautious approach to non-conventional trademarks

Italy - Jacobacci & Partners
As in all EU jurisdictions, trademark law in Italy recognizes the registrability of shape, colours and sound marks in principle, but case law so far indicates a guarded approach to the registration of non-conventional marks by the national IP office and the courts View PDF

Non-traditional trademarks in Mexico

Mexico - Uhthoff Gomez Vega & Uhthoff SC
Although Mexican law appears not to recognize non-traditional marks, on closer examination certain types of non-traditional mark enjoy full trademark protection in Mexico, provided that they fulfil specific criteria. Where the trademark law does not cover such marks, it may be possible to find alternative protection under other legal measures View PDF

The impact of recent Australian case law on colour marks

Australia - Baker & McKenzie
Non-traditional trademarks have been registrable in A ustralia since the Trademarks Act 1995 came into force. However, recent decisions of Australian courts indicate that many issues relating to the definition, scope and enforceability of these highly coveted marks remain unclear View PDF

The sound of unconventional marks in the United States

USA - Brinks Hofer Gilson & Lione
There are very few limitations, in principle, to what can be registered and protected as a trademark under US law. However, tests showing that the sign is a source identifier, is not functional and is distinctive must be met View PDF

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WTR Issue 06

Enforcement

Australia - Davies Collison Cave, LES database
Many countries have similar systems for the registration and enforcement of trademarks. However, there will inevitably be differences, often borne out of the different jurisprudential bases on which these systems are based. This article looks at trademark enforcement in Australia and highlights some aspects of the Australian legislation which differ from the US system. It also examines the main border protection methods available in Australia to trademark owners View PDF