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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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Issue 30

April/May 2011

Trademark registration and prosecution strategies

Issue #30
  • Trademark registration and prosecution strategies

    In Russia, in order to file a trademark application, it is not necessary to submit material proving use of the mark or even intention to use. However, before filing a trademark application, certain general points should be taken into account in order to ensure that proper protection for the trademark is obtained. read more

  • Trademark registration and prosecution strategies

    Applications for registration of words or logos may include multiple filing bases, including use, proposed use and use and registration abroad. If an application is filed based on proposed use, the applicant will ultimately need to file a declaration of use attesting to use of the mark in Canada before the application will proceed to registration. read more

  • Trademark registration and prosecution strategies

    As the Chinese language is fundamentally different from Latin language, businesses planning to tackle the Chinese market must have a Chinese version of their trademarks. One question that must be dealt with before filing a trademark application is how to select the appropriate Chinese equivalent of the original trademark. read more

  • Trademark registration and prosecution strategies

    Brand owners should note that the enforcement of rights before the Polish courts is more effective if a trademark owner enjoys protection under the national system. read more

  • Trademark registration and prosecution strategies

    In the United Kingdom, trademark rights are protected in two ways – by statute through an action for trademark infringement and by common law by means of a ‘passing off’ action. In order to obtain statutory protection, a trademark must be registered. read more

  • Trademark registration and prosecution strategies

    In the United States, practitioners should be wary of a host of issues before filing a trademark application. As a baseline, in order to anticipate and head off problems during prosecution, it is prudent initially to conduct a full trademark search. read more

  • Trademark registration and prosecution strategies

    The Mexican Institute of Industrial Property can often be subjective in its interpretation of the law, making it crucial for applicants to approach the authority to discuss any areas of uncertainty. This can result in significant savings. read more

  • Trademark registration and prosecution strategies

    The Italian Patent and Trademark Office can hardly count itself among the world’s most efficient industrial property offices. However, recent developments show that it is taking steps in the right direction. This is partly due to efforts made by the Italian legislature which, since 2005, has introduced a number of measures aimed at reorganising the IP system, particularly in regard to the trademark system. read more

  • Trademark registration and prosecution strategies

    Applicants applying for trademark protection in Germany are likely to perceive the German Patent and Trademarks Office (GPTO) as an accessible institution which takes a reasonably cooperative approach to the registration process. For example, wherever possible, applicants will be informed of any objections that the GPTO may have at an early stage in the proceedings, so that they can clarify uncertainties or submit observations to defend the application. read more

Issue 29

February/March 2011

Internet issues (other than domain names)

Issue #29
  • Internet issues (other than domain names)

    As the Internet becomes increasingly popular, online trademark infringement is becoming more common. As a result, traditional trademark protection methods have had to be adapted in order to take the unique characteristics of the online environment into consideration. read more

  • Internet issues (other than domain names)

    The Internet provides new means for infringing registered rights. Such activities started with registration of domain names incorporating a trademark – widely known as cybersquatting (fortunately, there has been much progress in this field) and typosquatting – and evolving to trademark and copyright infringement through, among other things, keyword advertising, gripe sites and phishing scams. read more

  • Internet issues (other than domain names)

    Companies are discovering that their trademarks are being used in ways that could not have been imagined a few years ago. For example, companies can purchase and use a competitor’s trademark as a ‘keyword’, and then use these keywords to trigger internet advertising for their own products and services. read more

  • Internet issues (other than domain names)

    Since the early 1990s the Internet has become incredibly popular; according to Netcraft research, as of October 1 2010 there were more than 232 million active websites. It is impossible to imagine life without the unlimited opportunities that it offers. However, people use the Internet for many different purposes, some of which may be against the law. read more

  • Internet issues (other than domain names)

    It is Saturday afternoon and Journey’s iconic song “Don’t Stop Believin’” is playing on a US college student’s computer. Next up on the playlist is something by Dave Matthews, followed by U2, Michael Jackson, The Rolling Stones and The Beatles: a well-thought-out playlist of tunes that have remained popular throughout the years. read more

  • Internet issues (other than domain names)

    According to research recently published by Maria de las Heras on www.elpais.com, around 30 million people in Mexico use the Internet, with each person spending an average of three and a half hours a week connected to the Web. Considering that Mexico has a population of approximately 106 million, this means that about 28% of Mexicans use the Internet. read more

  • Internet issues (other than domain names)

    The Google AdWords service and keywords in general are a current hot topic in the internet domain. For many years consumers have found the Internet to be the best marketplace for all kinds of goods and services. In particular, search engines help consumers to locate products from particular brands among all those available in cyberspace. read more

  • Internet issues (other than domain names)

    For many businesses, a high ranking on internet search engine results is vital in directing internet users to their websites. Google’s AdWords programme has proved a valuable tool for many businesses in attracting internet users to their websites. However, as a significant proportion of internet searches are conducted against terms that are trademarks, Google elected to include trademarks within its AdWords programme, allowing anyone to bid for another party’s mark for use as an AdWord. read more

  • Internet issues (other than domain names)

    Online advertising is a major industry. The Interactive Advertising Bureau of Canada reports that in 2009 Canadian online advertising revenues were C$1.82 billion, and forecasts that in 2010 revenues will rise to C$2.1 billion. In recent years the tension between online advertising and consumer privacy has given rise to several controversies. read more

Issue 28

December 2010/January 2011

Unregistered trademarks

Issue #28
  • Unregistered trademarks

    In Italy, the Civil Code and the Industrial Property Code ensure protection for unregistered marks, as well as other unregistered commercial signs (eg, insignia, business names and company domain names), but such protection is subject to strict conditions and a number of restrictions. read more

  • Unregistered trademarks

    While trademark rights can exist whether a trademark is registered or not, the advantages afforded to registered marks, whether in respect of enforcement, remedies or provincial regulations, make registration the recommended route to follow. read more

  • Unregistered trademarks

    In the United Kingdom, a brand owner can protect its unregistered trademarks and commercial signs through the common law right of passing off. This concept has been developed through case law and manipulated to encompass a wide variety of anti-competitive practices. read more

  • Unregistered trademarks

    Russia is a first-to-file country and therefore, according to Russian legislation, trademark rights apply from the moment that the mark is state registered. No rights derive from the use of an unregistered trademark. However, when Part IV of the Civil Code came into force in January 2008, it afforded a degree of protection to commercial indications or signs. read more

  • Unregistered trademarks

    All trademarks that are used in economic activity may be grouped into certain categories. This article focuses on registered trademarks (ie, those which have been granted protection by a decision of the Patent Office) and trademarks which have not been registered (ie, no official decision on granting protection has been issued), but which enjoy similar protection. read more

  • Unregistered trademarks

    Unregistered trademarks are protected under Romanian law if they are recognised as well known. Other commercial signs, such as trade names and company logos, enjoy some level of protection under trademark and unfair competition law. read more

  • Unregistered trademarks

    In the Spanish legal system, exclusive rights over a trademark or trade name are obtained through registration. Such registration confers on the proprietor exclusive rights in the relevant sign and allows it to prevent unauthorised third parties from using the sign in the course of trade. read more

  • Unregistered trademarks

    In the United States, protection is available for unregistered marks under common law and the federal statute known as the Lanham Act (§ 43(a)(1), 15 USC § 1125(a)(1) (1989)). The owner of a valid but unregistered mark can seek recourse against the copyist in state and federal courts. read more

  • Unregistered trademarks

    Unregistered trademarks, such as trade names, get-ups, trade descriptions, labelling or packaging and other commercial signs, are protected in Israel under various grounds and actions. read more

  • Unregistered trademarks

    In India, the primary legislation governing trademark protection is the Trademarks Act 1999. The right to institute infringement proceedings under the act is available only to the proprietors of a registered trademark. read more

  • Unregistered trademarks

    There are two types of unregistered trademark. The first, type A, is a trademark that is not registered in any class of goods or services within its jurisdiction; the second, type B, is a trademark that is registered in one or more classes or subclasses, but not in the class or subclass concerned in the dispute. read more

  • Unregistered trademarks

    Trading under an unregistered mark is never a good decision. However, there are certain rights which, under Mexican law, may allow you to continue its use. The way in which commercial signs are protected varies from country to country. However, all legislation follows common objectives. read more

  • Unregistered trademarks

    In Portugal, in order to obtain exclusive rights in respect of a distinctive sign used in trade, a decision of grant must be issued by the competent administrative body, the Trademark and Patent Office. The sign may consist of a trademark or a logotype – a Portuguese category of rights which, since the revision of the Industrial Property Code (Decree-Law 143/2008), includes names and emblems of establishment. read more

Issue 27

October/November 2010

Publicity and image rights

Issue #27
  • Publicity and image rights

    The need for the Indian legislature to recognise publicity and image rights in a statutory manner has never been greater. Celebrities increasingly seek to protect their publicity and image rights due to the rising commercial value of their fame and identity. read more

  • Publicity and image rights

    Although publicity and image rights might appear to have most in common with copyright, of all IP rights, this is not in fact the case. Copyright concerns property, whereas publicity rights concern privacy. The use of images may or may not be commercial – commercial use comes to mind when the image of a famous person is used. read more

  • Publicity and image rights

    A number of legal protections are available for the protection of publicity and image rights. read more

  • Publicity and image rights

    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. read more

  • Publicity and image rights

    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. read more

  • Publicity and image rights

    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. read more

  • Publicity and image rights

    Image rights are fundamental rights enshrined in the Spanish Constitution, yet a number of factors hamper effective judicial protection. read more

  • Publicity and image rights

    Legislation on image rights is becoming increasingly necessary. With the rapid development of China’s market economy and the emergence of new forms of marketing models, there is a growing interest in new forms of property rights – image rights – to deal with the growing commercial value of celebrities’ fame and identity. read more

  • Publicity and image rights

    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. read more

  • Publicity and image rights

    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). read more