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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 34

December 2011/January 2012

Advertising

  • 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

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  • 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

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  • Advertising

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

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  • Advertising

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

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  • Advertising

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

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  • Advertising

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

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  • 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

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  • 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

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  • 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

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  • 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

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  • 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

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WTR 33

October/November 2011

Pharmaceutical trademarks

  • 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.

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  • 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.

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  • 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

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  • 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.

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  • 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.

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  • Pharmaceutical trademarks

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

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  • Pharmaceutical trademarks

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

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  • 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.

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WTR 32

August/September 2011

Non-traditional trademarks

  • 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.

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  • 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?

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  • 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.

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  • 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

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  • Non-traditional trademarks

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

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  • 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.

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  • 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.

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  • 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

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  • 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.

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  • Non-traditional trademarks

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

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WTR 31

June/July 2011

Enforcement and litigation

  • 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.

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  • 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

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • 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

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  • 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.

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  • 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.

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