A recent decision has affirmed the principle that famous marks which receive recognition as highly reputed marks following the BPTO procedure deserve protection in all fields of activity, regardless of the possibility of confusion.
Famous and well-known marks are afforded extensive protection in Spain, but while ‘well-known’ and ‘reputation’ denote distinct legal concepts, English-speaking practitioners who are familiar with the Community trademark system need to be careful they are not misled by the Spanish terms for such marks.
The framework of protection for well-known and famous trademarks stems from existing Benelux legislation. Recent decisions suggest that this system, as transposed into EU legislation and elaborated by further case law, gives famous and well-known trademarks even greater protection than before.
The scope of traditional trademark protection is expanding with the recognition of well-known marks and marks with a reputation. Despite there being no legal definitions of these concepts, Portuguese doctrine and jurisprudence are working towards solutions which will enable owners of such marks to defend their rights.
Well-known trademarks in Norway are protected under the Trademarks Act and, to some degree, the Marketing Act, which requires traders to follow good business practice in their transactions with each other.
While the courts are applying statutory provisions that afford protection to well-known marks, the lack of guidance on the evidence required to prove that a mark is well known means that brand owners need to rely on judicial precedents in their actions.
While courts take account of the fame of a mark when assessing the likelihood of confusion, all the surrounding circumstances are considered – including evidence of consumer confusion and the connection between the goods and services of the interested parties.
In Denmark, it is recognized that well-known or famous marks require protection which is broader than merely direct competition. However, to enjoy extended protection, documentation must be submitted which confirms that the relevant consumers have a general and broad knowledge of the mark.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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
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.
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.
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.
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.
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.