WORLD TRADEMARK REVIEW Issue 12

Cheers to GIs

Geographical indications are often overlooked as
means to protect brands. As the UK government
closes a consultation on proposed increased
protection for both consumers and the scotch
whisky appellation, a reminder of how geographical
indications can be used successfully is called for

James Fry and Joanne Flack

Country correspondent

Anti-counterfeiting

Thorough investigations and careful evidence collection are at the heart of any successful anti-counterfeiting
campaign in China. But flexibility is also key

Anti-counterfeiting

A new law enacted on October 29 2007 brings the French IP provisions into line with the EU IP Rights
Enforcement Directive. The new provisions, some of which go beyond the directive’s requirements, bring
significant changes to IP practice in France

Anti-counterfeiting

One of the fastest-growing industries in India, the software and IT industry, is also one of the most affected by
counterfeiting and piracy

Anti-counterfeiting

A comprehensive legal framework and efficient enforcement by the courts mean that protection against
counterfeiting is very effective in Germany. However, the onus is on brand owners to protect their rights

Anti-counterfeiting

European Union

Seizures by Customs in the European Union increased by 40% between 2005 and 2006 and are continuing to
grow. Although legislation has been introduced to tackle counterfeiting across the European Union, far more
needs to be done to prevent the initial production and sale of infringing goods

Anti-counterfeiting

Italy enjoys the dubious honour of being at the top of the list of producers and consumers of counterfeit goods
in Europe. However, recent efforts may change this situation

Anti-counterfeiting

Until relatively recently, the Dutch authorities had a somewhat laissez-faire attitude to counterfeiting.
The belief was that rights holders should protect their economic interests themselves. Now, though, attitudes
have started to change

Anti-counterfeiting

Mexico is a large consumer and producer of counterfeits. However, this should not discourage brand owners
from devising anti-counterfeiting programmes, as Mexican legislation provides the necessary tools

Anti-counterfeiting

Although the United States provides a good legal framework to fight counterfeiting, depending on the legal
system alone is often not enough. US brand owners must be diligent in the prevention of the manufacture
and distribution of counterfeit products

Anti-counterfeiting

Mark owners seeking to protect their rights against counterfeiters should follow the money trail. New rules on
asset freezing orders in Australia will help them along the way

Roundtable

The case for Germany

Germany is the biggest and most affluent
country in Europe. That makes it a vital
market for companies from across the
world. However, while Germany is a
member of the European Union and should,
therefore, follow standard EU trademark
practice, there are certain nuances to the
way the law is interpreted and enforced that
could spell trouble for anyone failing to call
upon the expertise of local counsel. And for
those used to working in a common law
jurisdiction, the fact that Germany is a civil
law country brings other factors into play

Features

Aftershocks of Opel/Autec

In early 2007 the ECJ issued a decision on the use of an
automobile manufacturer’s mark by a third party on
its toy cars. The decision supposedly clarified what
constitutes infringement under Article 5(1)(a). One year
on, some are now arguing that the ruling may have
unforeseen consequences

Starbucks not running out of steam just yet

Starbucks suffered a dip in profits last year.
Nonetheless, plans for the global colonization of its
brand remain in place and the IP department will
continue to play a key role in realizing this aim

The real story behind Second Life

Much has been said in recent months about the
potential for trademark abuse on virtual reality
website Second Life, but what exactly do brand
owners seeking to protect their rights need to know?

Yahoo! acquisition: something to cheer about?

Microsoft’s plan to buy Yahoo! raises a number of
important branding and trademark considerations in
terms of both the minutiae of the deal itself and
the implications for the online advertising market

US design protection: before and after the Hague Agreement link

As a link between the United States and the Hague
Agreement is likely to become law soon, it is time to
take a look at design protection in the United States
and the effects that the link is likely to have

Carnival time for trademark practitioners and owners in Brazil

The Trademark Office is tackling one of the world's
worst examination backlogs and practitioners are
worrying about the effects that the Madrid Protocol
will have on their revenue streams. Yet the Brazilian
trademark market still holds promise for all its
stakeholders

Columns

Brands from the frontlineProtecting colour marks: the inside story

A trademark lawyer at BP gives an insight
into how the energy company obtained
trademark rights in the colour green and is
now protecting it as one of its most
valuable brands

Counterfeiting perspectivesPRO-IP bill sparks controversy

A new anti-counterfeiting bill was
introduced in the US Congress in December.
However, it is meeting some resistance

The view onlineOnline contributory liability and keying issues keep US courts busy

A New York federal court is considering the
issue of contributory trademark
infringement online while another US court
revisits the issue of keyword advertising

Trademark managementTrademark warming in Africa

Recent developments mean that
trademark owners should make plans
both to develop their brands’ presence and
to protect their rights in (and from) Africa

News

News