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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 22

December 2009/January 2010

Advertising

Issue #22
  • Advertising

    A boom in advertising over the past 10 years is reflected in the development of related legislation. However, there is limited case law from the courts in this field due to the significant enforcement powers of regulatory bodies. read more

  • Advertising

    Russian advertising law is not extensive and can be ambiguous, but an analysis of recent cases reveals that the legislation is, for the most part, interpreted intuitively. read more

  • Advertising

    The ECJ’s decision in the O2 Case has clarified key issues unique to Benelux. However, inconsistencies in approach are still apparent. read more

  • Advertising

    In a landmark decision, the High Court of Madras has attempted to tighten the rules on comparative advertising. However, the ruling may have opened the door to inconsistency in the interpretation of the law in this area. read more

  • Advertising

    A recent high-profile marketing initiative by a Mexican pharmaceutical company appears to be a clear example of unfair competition. This article puts the campaign in context and looks at the likely outcome for the advertiser. read more

  • Advertising

    While a fully joined-up European advertising policy remains a dream, at least the Danish system has been updated to provide comprehensive coverage. Moreover, individuals have a strong ally against unfair advertising in the shape of the Consumer Ombudsman. read more

  • Advertising

    Is the online use of a third-party mark to link through to competitor products lawful? Case history in Israel to date shows an increasing leniency towards this activity - Oren Mandler and Kfir Luzzatto analyze the reasons why. read more

  • Advertising

    Advertisers must take into consideration provisions of the Consumer Code and Legislative Decree 145/2007 when devising a marketing campaign. Any breach of the rules could lead to the advertisement being suspended and a fine. read more

  • Advertising

    Often the best way to make a product stand out is to compare it to competing products on the market. However, while powerful, comparative advertising treads a fine legal line between good business and unfair competition. read more

  • Advertising

    Norwegian law offers several means of enforcement against unfair and comparative advertising. This article analyzes the options available and provides an overview of recent amendments to the Marketing Control Act. read more

  • Advertising

    Brazil’s new fondness for comparative ads has highlighted ambiguities in the legal regime in this area. However, there is considerably more certainty over ambush marketing: the country’s selection as host of the 2014 World Cup and the 2016 Olympics have already prompted bills on the subject. read more

  • Advertising

    Facebook is bringing in new privacy measures in response to criticism in Canada over its handling of personal data. The new approach looks likely to have an impact on mark owners' advertising strategies. read more

  • Advertising

    The legislation on unfair and comparative advertising has its roots in the rules on unfair competition. The introduction of changes to the Advertising Code in 1998 clarified the law by implementing the EU Comparative Advertising Directive. read more

  • Advertising

    The sprawling legislative regime governing advertising, along with a fragmented administrative system, means that practitioners must stay on their toes when trying to determine whether an advertisement is permitted in Spain. read more

Issue 21

October/November 2009

Pharmaceutical trademarks

Issue #21
  • Pharmaceutical trademarks

    The Indian courts have adopted the principle of trans-border reputation to protect foreign pharmaceutical marks that have not been registered in India. read more

  • Pharmaceutical trademarks

    Spanish practice on pharmaceutical trademarks reflects recent developments at EU level. This article examines the relationship between such marks and international non-proprietary names and the criteria for determining the relevant public. read more

  • Pharmaceutical trademarks

    The main issues presented by pharmaceutical trademarks in Benelux concern their descriptiveness, the relevant public and parallel imports read more

  • Pharmaceutical trademarks

    Substantive legislative changes have opened the door to the parallel importation of pharmaceuticals in Israel. Parallel importation cannot be prohibited, unless the goods undergo substantial changes such that they can no longer be attributed to the mark owner. read more

  • Pharmaceutical trademarks

    Pharmaceutical trademarks in Portugal must meet both the requirements for registration as a trademark and those for eligibility as a medicine name, which are much stricter. read more

  • Pharmaceutical trademarks

    Trade dress issues in relation to pharmaceutical products have become more apparent in Brazil as trade in generic drugs increases. Luckily, local law provides adequate protection against imitation. read more

  • Pharmaceutical trademarks

    Inconsistencies in approach to the test of likelihood of confusion make it difficult to evaluate in advance the risks associated with adopting a pharmaceutical trademark in Italy. read more

  • Pharmaceutical trademarks

    Pharmaceutical trademarks must clear a number of hurdles, including distinct and independent reviews by the US Patent and Trademark Office and the Food and Drug Administration. read more

  • Pharmaceutical trademarks

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

  • Pharmaceutical trademarks

    Part IV of the new Civil Code establishes the basic regime for the protection of pharmaceutical trademarks in Russia. Rights holders must also be aware of legislation governing the use of medicines, and practice at the Patent and Trademark Office and the courts. read more

  • Pharmaceutical trademarks

    The EU courts have wrestled with the likelihood of confusion test for pharmaceutical marks over the years, often coming to seemingly conflicting conclusions. The Romanian courts, on the other hand, have preferred to keep things simple and have taken a more consistent line. read more

  • Pharmaceutical trademarks

    Many trademark challenges are specific to the pharmaceutical industry. Issues include whether clinical trials can be considered trademark use in Canada – a prerequisite to trademark registration – and the limited extent to which pharmaceutical trademarks can be used in advertising. read more

  • Pharmaceutical trademarks

    As with all EU member states, Denmark tightly regulates the use of pharmaceutical trademarks. This analysis examines how Denmark has aligned itself with the EU model. read more

  • Pharmaceutical trademarks

    A drug marketing authorization can be granted only if the name applied for varies by at least three letters from previously registered names. However, this rule is now being challenged read more

Issue 20

August/September 2009

Non-traditional trademarks

Issue #20
  • Non-traditional trademarks

    Non-traditional signs enjoy broad protection in the United States as long as they can function as trademarks. Nonetheless, proving acquired distinctiveness may be challenging for those signs, such as product designs, that lack inherent distinctiveness read more

  • Non-traditional trademarks

    The Indian Intellectual Property Office is putting together a manual on trademark practice and procedure which provides thorough guidelines on the requirements to register non-traditional marks. This article examines the latest proposals in detail. read more

  • Non-traditional trademarks

    Although the definition of ‘trademark’ under the Industrial Property Law is restrictive, most non-traditional signs can enjoy a degree of protection in Brazil read more

  • Non-traditional trademarks

    Even though the traditional view that trademarks can consist only of visual signs lingers in Romania, shapes, sounds and colour combinations may be registered as trademarks. Case law regarding other non-traditional marks, however, remains limited. read more

  • Non-traditional trademarks

    Spanish trademark law and practice are bound by EU regulations and case law. However, the Spanish Patent and Trademark Office is even more reluctant than the EU trademark bodies to register unconventional marks. read more

  • Non-traditional trademarks

    The definition of ‘trademark’ in Mexican law is restricted to signs that can be perceived visually. In practice, the Trademark Office narrows this definition further – for instance, by not granting registration to colours unless they are combined with other distinctive elements. read more

  • Non-traditional trademarks

    The protection afforded to non-traditional trademarks in Benelux is governed in large part by EU regulations and case law. However, Benelux courts are often prepared to grant protection where the EU instances are not. read more

  • Non-traditional trademarks

    In principle, any sign that is distinctive and can be represented graphically may be registered as a trademark in Denmark, but these requirements often prove to be insurmountable hurdles for non-traditional marks. read more

  • Non-traditional trademarks

    Three-dimensional trademarks can be registered in China as long as they are distinctive and non-functional. However, trademark owners should be aware that similar shapes may already have been registered as patent designs. read more

  • Non-traditional trademarks

    The conservative approach of the Patent and Trademark Office and the courts to the protection of non-traditional trademarks, as well as limited national case law on the issue, mean that much remains to be clarified with regard to the scope of protection of such signs. read more

  • Non-traditional trademarks

    Israeli law recognizes a broad range of signs as being registrable as trademarks. However, the Trademark Office’s practice on this matter is rather restrictive. read more

  • Non-traditional trademarks

    Three-dimensional shapes can be protected under trademark, industrial design and/or copyright law in Canada. To obtain immediate and comprehensive rights, brand owners should consider an integrated strategy combining all three protection schemes. read more

  • Non-traditional trademarks

    Part IV of Russia’s Civil Code provides for the registration of an array of non-traditional trademarks. But graphical representation may be an issue in some cases. read more

  • Non-traditional trademarks

    Although a number of non-traditional signs are protectable as trademarks under EU law, Portuguese law and practice are rather more restrictive. read more

  • Non-traditional trademarks

    Non-traditional marks

    are, by and large, protectable in Norway, with the restrictions imposed across the European Union also applicable in this non-EU country. read more

Issue 19

June/July 2009

Trademark enforcement

Issue #19
  • Trademark enforcement

    Mark owners seeking a preliminary injunction must file their request with a local bailiff’s court while full infringement proceedings should be filed with the Maritime and Commercial Court – a specialized court. read more

  • Trademark enforcement

    The issue of how best to protect trademark rights in China is one faced by many multinational companies. This article aims to provide some tips on successful enforcement in China. read more

  • Trademark enforcement

    Before the entry into force of the Trademarks Act in 2001, trademark owners struggled to enforce their rights before the courts. Further amendments were introduced by Act 19/2006, which implemented the IP Rights Enforcement Directive. read more

  • Trademark enforcement

    Trademark owners seeking to enforce their rights in Norway should typically start civil proceedings. However, mark owners should also consider applying for customs surveillance and should make use of alternative resolution bodies for solving unfair competition and domain name disputes read more

  • Trademark enforcement

    Determining which court has jurisdiction over a particular dispute is crucial for IP rights owners. Russian law provides a number of criteria to answer this question, but uncertainty remains as to certain kinds of IP cases read more

  • Trademark enforcement

    New enforcement tools in Brazil are encouraging trademark owners to litigate to protect their rights and claim monetary compensation for infringement read more

  • Trademark enforcement

    EU legislation provides a number of means by which IP rights may be enforced. In addition, various proposals and initiatives are pending in relation to criminal sanctions and the fight against counterfeiting and piracy. read more

  • Trademark enforcement

    The implementation of the IP Rights Enforcement Directive in Portugal represented a turning point in the country’s approach to enforcement. However, one year on, many questions remain unanswered read more

  • Trademark enforcement

    Trademark rights can be enforced in Canada on the basis of both registered and unregistered rights, under the federal statute and the common law tort of passing off. Remedies include interlocutory injunctive relief, but proving irreparable harm often presents a tremendous challenge. read more

  • Trademark enforcement

    The enforcement of IP rights in India remains inconsistent. While the Indian judiciary regularly displays remarkable flexibility with regard to protection, the enforcement of IP laws by law enforcement agencies leaves much to be desired read more

  • Trademark enforcement

    Italian statutory law provides all the tools necessary for the effective enforcement of trademark rights. This is further enhanced by the existence of specialized IP sections within the courts. However, some peculiarities of the Italian system mean that the courts are swamped by cases challenging the validity of registered trademarks. read more

  • Trademark enforcement

    Trademark owners have several means of enforcing their rights in Benelux. In addition, the scope and effectiveness of enforcement actions have increased since the implementation of the IP Rights Enforcement Directive. read more

  • Trademark enforcement

    Enforcing trademark rights in Israel can be done through the usual channels of the courts, the police and Customs. Filing petitions before the registrar of trademarks, particularly in cases of conflicting applications, should also be considered. read more

  • Trademark enforcement

    The debate surrounding the conflict between trademarks and trade names is not new in Romania. However, case law is developing, with certain courts finding that a trade name which infringes an earlier registered mark must be amended read more

  • Trademark enforcement

    When it comes to enforcing their rights in the United States, mark owners can choose between a vast array of tools, including arbitration, litigation and anti-counterfeiting actions. read more

  • Trademark enforcement

    In Mexico trademark rights are enforced mainly through the Trademark Office. The enforcement of famous and notorious marks is governed by specific rules. read more

  • Trademark enforcement

    Germany’s long tradition of trademark right enforcement ensures that brand owners are well protected. However, the recent implementation of the EU Unfair Commercial Practices Directive and the IP Rights Enforcement Directive introduced some small but noteworthy changes read more