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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 11

January/February 2008

Well-known and famous trademarks

  • 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

    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

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  • Well-known and famous trademarks

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

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  • 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

    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

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  • 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

    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

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  • 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

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WTR 10

November/December 2007

Advertising

  • 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

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  • 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

    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

    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

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  • 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

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  • 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

    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

WTR 09

September/October 2007

Domain name management

  • 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

    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

    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

    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

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  • 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

WTR 08

July/August 2007

Non-traditional trademarks

  • 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

  • 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

  • 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

  • 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 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

  • 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

  • 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