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Our Country Correspondents, leading firms from countries across the globe, take a detailed look at specific topics affecting trademark owners.

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WTR 48

April/May 2014

Advertising (unfair and comparative)

  • Advertising (unfair and comparative)

    The benefits of a civil approach in IP-related unfair competition lawsuits

    Vietnam has demonstrated remarkable determination in establishing and enforcing a legal framework to protect IP rights and prevent unfair competition individually

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  • Advertising (unfair and comparative)

    Adapting to current advertising realities

    As online retail grows, so too does the role of online advertising. As businesses become increasingly reliant on this form of advertising it is important to note the specific rules that apply

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  • Advertising (unfair and comparative)

    Avoiding advertising abuse

    There are many obstacles to enforcement of the comparative advertisement regulations, but the government has made efforts to prevent consumers from being misled

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  • Advertising (unfair and comparative)

    When commercial speech becomes unlawful

    Considering the differences in the various phases of assessing comparative advertising can provide advertisers with a useful tool to ensure such communications are lawful

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  • Advertising (unfair and comparative)

    Reviewing regulator action
    As well as civil remedies, complainants in Canada can also turn to a regulator and request that it investigate and pursue available remedies

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  • Advertising (unfair and comparative)

    When the battle heats up
    According to the principles of traditional Chinese medicine, excessive heat can harm the body. A case involving the brand 王老吉 seems to prove this theory well

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  • Advertising (unfair and comparative)

    A special place for comparison

    Comparative advertising is permissible in Poland, but strict rules must be followed

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  • Advertising (unfair and comparative)

    Deceptive claims may lighten advertisers’ wallets

    The US government has broad powers to investigate and penalise false advertising – and those penalties can be severe

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  • Advertising (unfair and comparative)

    Don’t believe everything you read

    Recent reports that a broader tolerance for comparative advertising would be allowed in Turkey were slightly misleading. However, Turkey is ultimately expected to follow the EU regime

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  • Advertising (unfair and comparative)

    Navigating Qatari law

    Qatari law contains numerous provisions which might concurrently or conjunctively give rise to a cause of action for unfair and comparative advertisements

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  • Advertising (unfair and comparative)

    Treading a fine line
    Comparative advertising is permitted if it can be shown that it is not an unfair trade practice by statute and under common law

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WTR 47

February/March 2014

Pharmaceutical trademarks

  • Pharmaceutical trademark

    According to information available from the Federal Ministry of Economics and Technology website, for many years the Germany pharmaceutical industry has played a significant role on the world stage. In 2011 898 companies were registered as pharmaceutical companies in Germany, of which 269 had more than 20 employees. That same year, revenues amounted to €39.2 billion – an increase of 4.5% on the previous year. The country’s pharmaceutical industry employed 105,400 staff in 2011 and exported pharmaceuticals with a total value of €50.4 billion. In sales terms, Germany is the world’s third largest pharmaceutical market.

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  • Pharmaceutical trademarks

    Contrary to applicable practice in other countries such as the United States, Article 87 of the Mexican Industrial Property Law establishes that in Mexico, the right to obtain exclusive use of a mark is obtained through registration and not through use or priority adoption. Therefore, it is necessary to file an application before the Mexican Trademark Office (MTO), part of the Mexican Institute of Industrial Property (IMPI), complying with the requirements established by Article 113 of the law.

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  • Pharmaceutical trademarks

    This article highlights some considerations relating to trademark usage standards, clearance and prosecution that pharmaceutical firms and their advisers should bear in mind during the drug branding process in the United States.

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  • Pharmaceutical trademarks

    UK trademarks are regulated under the Trademarks Act 1994. Further guidance and regulation for pharmaceutical products are provided by the Medicines and Healthcare Products Regulatory Agency (MHRA), while the European regulator is the European Medicines Agency.

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  • Pharmaceutical trademarks

    The third amendment to the Trademark Law, which will take effect on May 1 2014, has brought about changes to both the procedural and substantive aspects of trademark practice in China, and some may influence the protection of pharmaceutical marks. Since the law has not yet come into effect, the cases cited here were all decided under the law before its amendment, but this article also discusses potential expected changes to similar cases in future.

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  • Pharmaceutical trademarks

    Opposition proceedings against trademark applications filed in Italy and against Italian designations for registration of international trademarks reveal the methods used to examine possible likelihood of confusion based on the different products or services claimed and on the different characteristics of target consumers.

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  • Pharmaceutical trademarks

    The Supreme Administrative Court of Finland has issued a groundbreaking decision regarding the protection of wellknown house marks in the pharmaceuticals industry. The decision in question concerned a trademark registration dispute between Finnish pharmaceuticals company Orion Oyj (parallel trade name Orion Corporation) and Orion Corporation, a South Korean confectionery company.

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  • Pharmaceutical trademarks

    In Canada, the selection of a brand name for a prescription drug must be assessed bearing in mind both regulatory issues handled by Health Canada and trademark registration issues pursuant to the Trademarks Act. If a product name is approved by Health Canada, it does not necessarily follow that the name will be registrable as a trademark; and similarly, if a name is found to be registrable as a trademark, this does not mean that the name will be accepted by Health Canada. Health Canada considers the issue of drug name confusion from a health and safety perspective. By contrast, the selection of a trademark under the Trademarks Act focuses on the likelihood of confusion as to the source of manufacture of the products.

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  • Pharmaceutical trademarks

    Branding in the pharmaceutical industry has its challenges. Restrictions on advertising and promotion are an obvious impediment to the building of brand recognition. Purchase decisions are influenced not only by consumers, but also by prescribing doctors and pharmacists. Further, in order to take advantage of the limited patent protection period, product managers often choose a trademark or brand name that is influenced, to a large extent, by the principal ingredient in the drug or the ailment that it is intended to treat. The objective is to create better brand recall so that doctors, pharmacists and patients can easily associate the mark or name with the product’s principal component or ingredient or the ailment which it is intended to treat, thus making it an easier sell.

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  • Pharmaceutical trademarks

    The Turkish Patent Institute is the only authority that can grant registration of trademarks in Turkey. However, no medicinal product can be marketed without authorisation from the Ministry of Health.

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WTR 46

December 2013/January 2014

Non-traditional trademarks

  • Non-traditional trademarks

    Reflecting the current trend towards the use of less conventional signs, the Romanian trademark office is
    open to the registration of non-traditional marks – with certain caveats

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  • Non-traditional trademarks

    Although some non-traditional marks are protectable in Vietnam, there are still concerns about their
    registrability and enforcement

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  • Non-traditional trademarks

    If practitioners can avoid registration refusals based on functionality and lack of distinctiveness, the liberal
    US regime for non-traditional marks provides brand owners with an opportunity to strengthen goodwill

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  • Non-traditional trademarks

    Patent Office practice in relation to non-traditional trademarks has been relatively poor. However, it is
    hoped that within the next few years, things will improve

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  • Non-traditional trademarks

    Non-traditional marks are modern and in vogue, but the possibility of effective enforcement and the ability
    to evidence proper use of a non-traditional mark are questionable in Russia

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  • Non-traditional trademarks

    Non-traditional marks are gaining acceptance in India, and trademark laws and procedures are evolving
    with time. Overall, the future seems promising

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  • Non-traditional trademarks

    Non-traditional marks are afforded protection in Italy, but there are challenges to registration

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  • Non-traditional trademarks

    Although the non-traditional marks realm remains largely unexplored in China, there is a trend towards
    broadening the scope of protection to include such marks

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  • Non-traditional trademarks

    Conflicting views centre on how to represent non-traditional marks graphically so that they can be
    registered with the Turkish Patent Institute

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  • Non-traditional trademarks

    A recent landmark decision, focused on the Carneval biscuit, offers important insight into the treatment of
    product appearance in Finland

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  • Non-traditional trademarks

    Although Mexican law grants protection to some non-traditional marks, it requires updating in order to
    meet modern demands

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  • Non-traditional trademarks

    The requirements to demonstrate distinctiveness at filing, as applied by the Canadian Trademarks Office, pose a significant obstacle to the registration of non-traditional marks

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  • Non-traditional trademarks

    Non-traditional trademarks in Germany have two compounded problem areas compared with traditional
    trademarks

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  • Non-traditional trademarks

    The issues that can arise around non-traditional trademarks are illustrated by high-profile disputes in the
    UK confectionery sector

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WTR 45

October/November 2013

Enforcement and litigation

  • Enforcement and litigation

    It seems that everyone is talking about trademarks in China. Far and away the most common question
    continues to be: is it really possible to enforce trademarks in China?

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  • Enforcement and litigation

    The extraterritorial reach of the Lanham Act is a viable option against foreign infringers, with circuit courts
    showing a trend towards broadening the scope of application

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  • Enforcement and litigation

    A number of factors have to be considered when creating an anti-counterfeiting strategy – but the law is
    there to help

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  • Enforcement and litigation

    Trademark owners enforcing their rights in Turkey should consider the following tips when formulating
    their strategy

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  • Enforcement and litigation

    The Polish legal system offers different tools to protect IP rights – the key is striking the right balance
    between prevention and speedy responses to infringement

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  • Enforcement and litigation

    The enforcement options for trademark owners are constantly evolving. When considering approaches to
    the resolution of a particular problem, rights holders should balance a number of considerations

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  • Enforcement and litigation

    Enforcement of trademark rights online remains a challenge and advertisers would be well advised to
    observe the limits established on the use of keywords by Germany’s Federal Court of Justice

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  • Enforcement and litigation

    Trademark rights can be enforced through prosecution or judicial proceedings, leaving rights owners with
    a number of options to consider

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  • Enforcement and litigation

    Despite the limitations of provisional measures in Mexico, when correctly planned and executed they can
    prove an adequate tool to enforce IP rights

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  • Enforcement and litigation

    A number of options are available to brand owners seeking to enforce their rights in Canada

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  • Enforcement and litigation

    Analysis of recent cases illustrate the effectiveness of the Italian system in the protection of designs, both
    registered and unregistered

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  • Enforcement and litigation

    Working with law enforcement authorities and courts in India can be challenging, but by adopting the right
    approach, clear results can be achieved

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  • Enforcement and litigation

    The establishment of a specialised IP court has the potential to improve significantly both the quality of
    decisions and the way that cases are handled on a practical level

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