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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 22

December 2009/January 2010

Advertising

  • 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

    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

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

    read more

  • 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

    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

    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

    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

  • 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

    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

    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

    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

    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

    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

WTR 21

October/November 2009

Pharmaceutical trademarks

  • 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

  • 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

    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

    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

    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.

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  • 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

    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

    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

    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

    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

    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

    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

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

    read more

WTR 20

August/September 2009

Non-traditional trademarks

  • 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

    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

    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

    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

    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

    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

    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

    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

    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

    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 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

    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

    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

    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

    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

WTR 19

June/July 2009

Trademark enforcement

  • 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

    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

    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

    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

    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

    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

    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

    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

    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

    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

    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

    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

    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

  • 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

    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

    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