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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 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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WTR 30

April/May 2011

Trademark registration and prosecution strategies

  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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WTR 29

February/March 2011

Internet issues (other than domain names)

  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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WTR 28

December 2010/January 2011

Unregistered trademarks

  • 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.

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  • 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.

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  • 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

    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.

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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