A Community trademark offers the considerable advantage of protection in the European Union’s 27 member states. However, the Community system still presents a number of drawbacks that may lead mark owners to prefer other registration systems.
While trademarks are protected under both common law and federal law in the United States, obtaining a trademark registration offers unparallelled advantages. But brand owners should beware of the quirks of the US registration system.
Despite not being part of the European Union, Norway’s registration procedures are, for the most part, aligned with those in place across Europe. However, there are some differences so rights holders must plan their filing strategies with care.
A lack of objective guidance from the Portuguese Trademark Office and conflicting decisions from the courts with regard to the classification of goods and services create difficulties for IP rights owners seeking to protect their rights in Portugal.
Trademark prosecution in Italy differs strikingly from most other systems. The process will significantly improve once the opposition system, set out in the Trademark Law of 1999, is finally implemented.
Protecting trademark rights in Mexico poses a number of challenges. The law sets out strict requirements on the types of signs that are capable of registration and the procedures differ in many ways from those in place in other jurisdictions.
Marks that are similar and were filed close together in time are normally examined by the registrar of trademarks who will render a decision based, among other things, on the good faith of the applicants and the extent of use of the marks at issue.
Brand owners seeking to register their marks in China need to be aware of the delays at the Trademark Office, the quirks of the classification system and the pitfalls of transliterating names into Chinese characters.
Selecting the goods and/or services to be applied for in a trademark application is a more complex task than meets the eye. This is particularly true in Spain where the trademark office's practice differs from that of other EU IP offices.
Jurisdiction is probably one of the most important legal matters raised since the launch of the Internet. A Jerusalem court has considered this issue in detail and has ruled, among other things, that a decision from a foreign court can be enforced in Israel.
As the Internet offers increasing opportunities for wrong-doing to scammers, counterfeiters and other infringers in the online environment, this article reviews some of the recourses available and best practices for brand owners
The liability of online auction website operators and search engines are among the most controversial and most important issues in relation to trademarks online. So far, the Brazilian courts have not considered either in much detail.
Due to a lack of legal framework, trademark owners find it difficult to enforce their rights on the Internet – in particular, on online auction platforms. However, self-regulation codes have been developed in order to tackle this issue
Keyword advertising, gripe sites and phishing can all infringe IP rights. Such activities generally trigger liability under unfair competition law in Romania and require detailed enforcement strategies
Under the Electronic Commerce Act, an internet service provider is not liable for the information that it stores unless it has actual knowledge of the illicit nature of such information. So far, no court decision has addressed the issue of the liability of service providers
The law relating to online infringement continues to develop rapidly in Benelux. Among other things, trademark owners must familiarize themselves with the latest rulings on the liability of internet service providers
Issues once hotly debated, such as metatagging, have now been settled in Germany. However, new practices, in particular keyword advertising and the liability of online auction platforms, still give rise to conflicting court decisions
No keyword advertising case has reached the Canadian courts yet. However, a decision on ‘use requirements’ and various metatags decisions give indications of how the courts may approach keyword advertising cases
China is already home to the highest number of internet users in the world. Online trademark infringement is a growing concern and recent cases suggest that the onus for policing rights falls on brand owners.
Because of the difficulties in identifying the perpetrators of many acts of online infringement, IP rights holders increasingly turn to internet service providers for redress. However, the Spanish courts have so far interpreted narrowly the EU provisions on providers’ liability
Trademark and commercial name protection in the United States is multifaceted and extends to all trademarks, commercial signs, trade names and trade dress/get-up acquired in good faith whether registered or not.
Commercial signs such as trade names, well-known unregistered marks and domain names enjoy some protection under either the Benelux Convention on Intellectual Property or national laws of Benelux member states
Unregistered trademarks are protectable in Germany as long as they function as trademarks and have acquired a reputation through use. Other commercial signs may also be protected, with the distinctiveness requirements varying depending on the type of right sought
Unregistered trademarks are protected under Romanian law if they are recognized as well known. Other commercial signs, such as trade names and company logos, enjoy some level of protection under trademark and unfair competition law
The Italian legal system grants protection to various unregistered signs, but in practice protection is limited by the heavy burden of proof imposed on the owners of such signs and the somewhat unpredictable application of the law by the courts
Unregistered trademarks, trade names and other business signs are protected in Canada under the common law action of passing off. Although this grants unregistered rights extensive protection, passing off carries a heavy burden of proof
While trade dress rights may be enforced against third parties under unfair competition provisions, the scope of protection afforded to most unregistered rights is limited to serving as a defence against claims made by a later registrant of a similar or identical mark
In Italy, publicity and image rights are governed by the Civil Code and the Copyright Law. Consent to use an individual’s image must be obtained, especially where the image is exploited for commercial purposes
Portrait rights in China are not absolute: fair use of a personality’s image is allowed, as long as the person making the unauthorized use exercises care in the manner in which the portrait is displayed
India is yet to recognize the rights of publicity and image as distinct legal rights. However, individuals may rely on an accepted framework of IP and other rights to prevent the unauthorized exploitation of their names and images
The Federal Court of Justice has recently introduced a new graduated concept of protection under which the greater the informative value of the image or the social relevance of the incident reported, the more the protection of the personal rights must take second place