Country Correspondent

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

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Issue 34

December 2011/January 2012

Advertising

Issue #34
  • Advertising

    In many cases comparative advertising is lawful, but the law demands that an advertisement be authentic. Advertisers should therefore be careful when stepping into this arena read more

  • Advertising

    While the global downturn has hit advertising spend, the legal framework governing practice remains steady read more

  • Advertising

    The dividing line separating lawful from unlawful conduct in comparative advertising is very thin. Fortunately, Mexican law provides a set of principles and rules on the matter read more

  • Advertising

    The idea of comparative advertising being assessed equally within the European Union under a harmonised unfair competition law has gone awry read more

  • Advertising

    In Canada, there is no express prohibition against direct comparative advertising. However, the prevalence of this practice differs greatly from sector to sector read more

  • Advertising

    While a true comparison of product performance is the cornerstone of legal protection, it is only the starting point in designing an honest and fair advertisement read more

  • Advertising

    Since there is a range of legislation dictating advertising practice, investment in a proper review and clearance process is minimal compared to the potential cost of claims read more

  • Advertising

    In Poland, advertisers have shied away from comparing products, despite the existence of a comprehensive regulatory regime for comparative advertising read more

  • Advertising

    While existing laws do not dictate what comparative advertising practices are acceptable, given the rapid development of the advertising industry in China, more rules and regulations can be expected read more

  • Advertising

    Both the ECJ and the English courts have credited comparative advertising with promoting healthy competition, but advertisers need to ensure they comply with the rules read more

  • Advertising

    While India has no specific legislation governing comparative advertising, statutes on unfair trade practice and common law need to be considered. Additional lessons can be found in case law read more

Issue 33

October/November 2011

Pharmaceutical trademarks

Issue #33
  • Pharmaceutical trademarks

    During the last two years, the German courts have decided a number of cases involving pharmaceuticals and medical devices. However, the courts have often reached contrasting conclusions. read more

  • Pharmaceutical trademarks

    Pharmaceutical trademark clearance is a complex process. A successful pharmaceutical trademark passes marketing muster only by resonating with relevant consumers and conveying the right brand message. It must also be available for use and registration on a global basis, and must survive regulatory scrutiny not only in the United States, but also in several foreign jurisdictions. read more

  • Pharmaceutical trademarks

    Brand owners need to be aware of a number of restrictions when seeking to register pharmaceutical trademarks read more

  • Pharmaceutical trademarks

    With new opposition proceedings finally in force in Italy, it is expected that the Italian Patent and Trademark Office will also finalise its practice with regard to pharmaceutical trademarks. To this end, the latest rulings of the Italian courts on pharmaceutical trademarks should be examined. read more

  • Pharmaceutical trademarks

    To safeguard consumers, it is necessary to have clear, simplified and consistent parameters for the comparison of marks, while avoiding the stifling of competition read more

  • Pharmaceutical trademarks

    As in most other jurisdictions, in China pharmaceutical companies must navigate a dual system for registration and approval of their trademarks and the commercial names of their products. read more

  • Pharmaceutical trademarks

    The EU regime casts a heavy shadow over the UK pharmaceutical practice read more

  • Pharmaceutical trademarks

    In Canada, the brand name for a prescription drug must be selected bearing in mind not only trademark registration issues pursuant to the Trademarks Act and within the domain of the Canadian Trademarks Office, but also regulatory matters handled by the Therapeutic Products Directorate of Health Canada. read more

Issue 32

August/September 2011

Non-traditional trademarks

Issue #32
  • Non-traditional trademarks

    Proposed practice rules, if implemented, could pave the way for the registrability of sound and colour marks read more

  • Non-traditional trademarks

    The US system for protection and registration of non-traditional trademarks is liberal and pragmatic. Practitioners should consider its flexibility and broad protection. Rights holders can confidently embrace non-traditional trademarks in their overall IP strategy for the US market. read more

  • Non-traditional trademarks

    According to the law on traditional trademarks, words, logos and wording in special characters enable consumers to distinguish sources of goods and services. However, what about particular colours and sounds that have the ability to identify goods and services belonging to a particular business source? read more

  • Non-traditional trademarks

    A trademark’s principal function is to distinguish the products of one entity from those of another. In order for a sign to serve this purpose, it must be perceived by the public as a sign of origin and not as a mere description, general statement or advertisement. read more

  • Non-traditional trademarks

    The Trademark Law 1998 (significantly amended in 2010) follows the principles of the EU First Trademarks Directive (89/104/EEC). Thus, in Romania, a ‘trademark’ is defined as any sign that is capable of being represented graphically and distinguishing the products of one entity from those of others. read more

  • Non-traditional trademarks

    Sophisticated businesses rely on more than simple words and logos to identify their products and services. Unique product and packaging shapes, slogans, colours, jingles, endorsement by personalities and even smells can be used by businesses to identify their products or services. read more

  • Non-traditional trademarks

    While colour combination and three-dimensional trademarks are still relatively new to China, there remain great uncertainties about their protection read more

  • Non-traditional trademarks

    The Russian regime does not set down separate regulations to govern applications for non-traditional trademarks, although moves are afoot to improve the legislation read more

  • Non-traditional trademarks

    In order to make a product or service more attractive or distinguishable, non-traditional marks are often used in modern marketing strategies. However, such use may result in a lack of adequate protection in some jurisdictions. Now that business is conducted on a global scale due to technological advances such as the Internet, manufacturers and service providers face pressure not only from the competition, but also because consumers are more demanding of new characteristic elements when deciding what to buy. read more

  • Non-traditional trademarks

    Non-conventional marks are slowly gaining acceptance in India. However, trademark laws and procedures are still evolving, making it important to keep abreast of the latest developments read more

Issue 31

June/July 2011

Enforcement and litigation

Issue #31
  • Enforcement and litigation

    Litigation in the United Kingdom can be costly and time consuming. Many IP disputes are therefore resolved by settlement. However, where a dispute cannot be resolved amicably, one or both parties may consider that the dispute warrants court intervention. read more

  • Enforcement and litigation

    There are no administrative remedies available for the enforcement of IP rights in India. Therefore, the possible options for seeking relief are through the civil or criminal route, or both. read more

  • Enforcement and litigation

    Romania has experienced rapid growth in IP rights litigation over the past 10 to 15 years, with a particular focus on trademarks, patents and copyright (in 1995 there were only around 20 to 30 trademark cases in total). The trend continued after Romania joined the European Union in 2007, and there are an increasing number of cases in which Community trademark rights are at stake. read more

  • Enforcement and litigation

    US trademark owners can enforce their trademarks against an infringer under either Section 32 or 43(a) of the Lanham Act (15 USC Section 1051 and following). Section 32 provides for relief from the use in commerce of any copy or colourable imitation of a registered trademark in connection with the sale of, or offering for sale of, any goods or services that is likely to cause confusion or mistake, or to deceive. read more

  • Enforcement and litigation

    Just as the trademark marketplace is constantly changing, the law is always developing. Effective trademark enforcement therefore requires that counsel carefully consider the surrounding circumstances of each case. read more

  • Enforcement and litigation

    Under Chinese law, three types of remedial measure are available to protect trademark rights: civil, administrative and criminal proceedings. A foreign legal or natural person may use these to protect its lawful rights in a trademark read more

  • Enforcement and litigation

    Have you ever thought about the best way to defend your trademark in Mexico? It is not easy to recommend a specific path to follow in order to safeguard or preserve a trademark right, since rights holders can choose from a wealth of diverse strategies to protect marks or tackle infringement. read more

  • Enforcement and litigation

    Italy is the ideal forum for the protection of IP rights in the European Union, thanks to judicial expertise, predictability of rulings and the short timeframe in which decisions are issued read more

  • Enforcement and litigation

    In the event of a trademark or company name (trade name) being infringed, the proprietor can take certain action against the infringer, including a cease and desist action, claims in damages or proceedings for the disclosure of information and for destruction. read more

  • Enforcement and litigation

    In September 2010 Russia’s High Arbitrazh Court submitted to Parliament a draft bill which provided for the creation of an Intellectual Rights Court, scheduled to arrive by 2012. In the meantime, rights holders have a range of options for enforcing their rights. read more