Country Correspondent

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 11

January/February 2008

Well-known and famous trademarks

Issue #11
  • Well-known and famous trademarks

    Well-known and famous marks enjoy increasingly good protection Down Under, even though only one provision mentions them expressly read more

  • Well-known and famous trademarks

    Italian legislation provides a good framework for the protection of well-known marks. However, there has been limited case law so far, leaving some uncertainty as to how to determine when ‘unfair advantage’ or ‘detriment’ to the well-known mark occurs read more

  • Well-known and famous trademarks

    US federal trademark law was amended on October 6 2006 by the Trademark Dilution Revision Act. Rulings under the new law trickled in during 2007, of which the most noteworthy is the decision of the US Court of Appeals for the Fourth Circuit in a commercial parody case involving Louis Vuitton read more

  • Well-known and famous trademarks

    Through a combination of local laws, EU legislation and international measures, famous marks are well protected in Benelux. Over the past few years, the courts and the Benelux Office of Intellectual Property have strengthened well-known mark owners’ rights yet further read more

  • Well-known and famous trademarks

    Protecting trademarks that enjoy a reputation is a sensitive aspect of trademark law practice and doing so in France is no exception. A review of both the statutes and case law is needed to draw a clear picture of the French approach read more

  • Well-known and famous trademarks

    Both the First Trademarks Directive and the Community Trademark Regulation afford protection to well-known and famous trademarks. Uncertainty remains as to the definition of some key terms – for instance as to whether ‘well-known marks’ and ‘marks with a reputation’ have the same meaning read more

  • Well-known and famous trademarks

    Germany has a long history of offering strong protection to well-known and famous marks. As the courts have developed the law in this area, they have slowly relaxed the criteria for recognition as a well-known mark. These days, good survey evidence can mean that even the most descriptive of marks may be classified as well known read more

  • Well-known and famous trademarks

    Following an amendment to the law in 2005, procedures allowing rights holders to apply for declarations that their marks are famous or notorious in Mexico finally came into effect in late 2007. Rights holders and their advisers must be aware of the important distinctions between these two types of mark read more

Issue 10

November/December 2007


Issue #10
  • Advertising

    The use of another party’s trademark in advertising remains controversial in the online context. The US courts have yet to come to an agreement as to the legality of practices such as keyword advertising read more

  • Advertising

    The relationship between trademarks and advertising has its complexities, prompting questions such as when using another party’s trademark in advertising constitutes an infringement, whether a slogan can be registered as a mark and what advertising uses will suffice to maintain rights in a mark read more

  • Advertising

    Advertising in the European Union is heavily regulated – at both general and specific levels. Brand owners and their counsel need to be familiar with at least the two directives that regulate advertising across all fields read more

  • Advertising

    It is still unclear when use of another party’s mark in advertising is infringing under UK law. That is why the English courts have referred a number of questions on this issue to the European Court of Justice read more

  • Advertising

    Brand owners must consider the risk of breaching unfair competition law when advertising their products. Luckily for advertisers, the Supreme Court has issued two decisions that relax Germany’s stringent law in that regard read more

  • Advertising

    Two sets of regulatory frameworks govern advertising practices in Italy. One is self-regulatory, the other legislative. Brand owners looking to promote their products or services in Italy and those advising them need to be fully aware of both systems read more

  • Advertising

    Ten years ago, comparative advertising featuring third-party marks was unlawful in Benelux. The implementation of the EU Comparative Advertising Directive has forced a change in thinking, but the courts still maintain a relatively strict approach read more

  • Advertising

    Advertising in Mexico is highly regulated and IP law forms part of the framework governing this area. Brand owners should familiarize themselves with the rules and protection available before embarking on an advertising campaign read more

Issue 9

September/October 2007

Domain name management

Issue #9
  • Domain name management

    Registration of domain names in the ‘.mx’ country-code top-level domain is rapidly gaining in popularity. Parties looking to register domain names or defend their interests in Mexico need to look carefully at the IP assets they hold and be aware of additional types of protection that may be available read more

  • Domain name management

    The management and regulation of ‘.au’ domain names are subject to a number of peculiarities that are commonly misunderstood. Among other things, there are strict eligibility requirements, prohibitions on sale and limitations on transfer to take into consideration. Key differences between the policy governing ‘.au’ domain name disputes and that used for generic top-level domains also exist read more

  • Domain name management

    With the emergence of new practices such as domain name tasting, brand owners must reinforce their programmes for procuring, administering and monitoring domain name registrations. Such measures are an essential counterpart of any thorough brand protection regime read more

  • Domain name management

    With over 2.4 million ‘.eu’ domain names registered since its launch a year ago, the ‘.eu’ domain is certainly proving popular. Despite early teething problems the sunrise periods gave rights holders the opportunity to register their key domain names. The alternative dispute resolution procedure established provides a further mechanism through which rights holders can enforce their IP rights read more

  • Domain name management

    The management of domain names in Germany, as in all other jurisdictions, requires careful planning and a detailed knowledge of the peculiarities of the domain name registration and protection systems. Notably, alternative dispute resolution does not exist in Germany; however, the use of court procedures can quickly stop cybersquatters in their tracks read more

  • Domain name management

    In order to ensure efficient domain name management in the jurisdictions making up Benelux, mark owners must take into account both general rules and the specifics of local case law read more

Issue 8

July/August 2007

Non-traditional trademarks

Issue #8
  • The impact of recent Australian case law on colour marks

    Non-traditional trademarks have been registrable in A ustralia since the Trademarks Act 1995 came into force. However, recent decisions of Australian courts indicate that many issues relating to the definition, scope and enforceability of these highly coveted marks remain unclear read more

  • Non-traditional trademarks in Mexico

    Although Mexican law appears not to recognize non-traditional marks, on closer examination certain types of non-traditional mark enjoy full trademark protection in Mexico, provided that they fulfil specific criteria. Where the trademark law does not cover such marks, it may be possible to find alternative protection under other legal measures read more

  • Benelux approach to non-traditional marks

    The Benelux countries, Belgium, the Netherlands and Luxembourg, have uniform trademark and design laws, and a harmonized approach to the protection of non-traditional marks. As members of the European Union, the practice of the Benelux countries in this area is also highly influenced by EU law read more

  • The tradition of non-traditional trademarks in Germany

    Even before the implementation of the EU First Trad emarks Directive in Germany in 1995, the German courts and the Patent and Trademark Office had begun to establish a tradition of registering and defending non-traditional marks. However, the use of such marks has challenged German trademark practice and raised new questions to be answered by the courts read more

  • Non-traditional trademarks in the Community trademark system

    Modern EU trademark law offers, in theory, the possibility of registering shape, sound or colour marks, but applicants will face hurdles such as graphical representation and proving acquired distinctiveness read more

  • The sound of unconventional marks in the United States

    There are very few limitations, in principle, to what can be registered and protected as a trademark under US law. However, tests showing that the sign is a source identifier, is not functional and is distinctive must be met read more

  • Italy's cautious approach to non-conventional trademarks

    Marilena Garis, Jacobacci & Partners, Italy

    As in all EU jurisdictions, trademark law in Italy recognizes the registrability of shape, colours and sound marks in principle, but case law so far indicates a guarded approach to the registration of non-conventional marks by the national IP office and the courts read more