WORLD TRADEMARK REVIEW Issue 15

The inside track – Coca-Cola

The recently appointed European trademark counsel for The Coca-Cola Company talks to World Trademark Review about moving from private practice, tightening budgets and poor customs legislation, among other things

Features

OHIM: A year of change

This year will be remembered as an important one for OHIM. Examination times are likely to start falling significantly and the promised cut in fees seems to be on the horizon at last. Although justifiably proud of its achievements this year, the management at OHIM is well aware that more needs to be done

Win some, lose some

Internet host providers and auction platforms increasingly find
themselves at the centre of claims for trademark infringement
based on sales of counterfeit items on their websites. Two courts – one in France and one in the United States – have recently issued decisions in cases involving eBay, but reached completely different conclusions. In this focus, David S Fleming of Brinks Hofer Gilson & Lione examines the long-awaited decision in the Tiffany Case, while David Taylor of Lovells talks to WTR about the issues raised by the French ruling

The Mysterious ACTA

There has been a lot of talk about the Anti-counterfeiting Trade Agreement since news of its existence first broke towards the end of last year. An unusual level of secrecy surrounding the negotiations means that people are not sure exactly what the treaty is about

Escaping the money trap

OHIM has amassed well in excess of €300 million in surplus funds. The problem is, it was never supposed to make any money. A cut in fees was agreed over a year ago, but progress has since been slow. WTR asked a number of interested parties for their opinions on what should be done with the excess funds

Keeping it together

OHIM has close ties with the national offices of all member states and new IT tools will usher in even higher levels of cooperation. However, the decision to make national search fees optional and proposed cuts to OHIM’s fees have caused divisions

Plundering Culture

While the scope of protection to be afforded to indigenous peoples’ rights is still the subject of international debate, brand owners should take note that the efforts to preserve or revive these rights mean that some names or traditional imagery may not be used freely

The O2 Case – a European perspective

The ECJ has issued guidance on comparative advertising following a reference from the Court of Appeal for England and Wales in O2 Holdings Limited v Hutchison 3G UK Limited. The case may have repercussions on national practice across the European Union

The future of attorneys’ fees awards in US counterfeiting cases

In late 2007 the Ninth Circuit refused to award attorneys’ fees in a counterfeiting case on the basis that the plaintiff had chosen to receive statutory rather than actual damages. This decision departed from precedent and worried brand owners

Columns

Trademark managementA guide to licensing and franchising in Russia

Recent changes to Russia’s IP legislation have reinforced a statutory platform for contractual licensing and franchising in
Russia. While the new rules have clarified certain aspects, licensing and franchising remain complex operations in Russia

Counterfeiting perspectivesDealing with ineffective Canadian laws

The international anti-counterfeiting community regularly cites Canada as having inadequate and ineffective IP rights protection. Prompted in part by this censure and in part by a grass-roots demand for change, Canada is taking steps to improve its IP protection

The view onlineStrategic thinking needed in online advertising cases

In internet advertising cases, multiple splits of authority in US courts make it important to think strategically both in litigation and in setting corporate advertising policies

Roundtable

Avoiding the pitfalls of operating online

Three senior practitioners look at trademark issues affecting brand
owners on the Internet

News

Domain space set to expand

The board of the Internet
Corporation for Assigned
Names and Numbers, the body
responsible for the global
coordination of domain names,
approved at the end of June a
recommendation that will
dramatically expand the
possibilities for new top-level
domains (TLDs) in the generic
domain name space

News in brief

World Cup marks cancelled by OHIM board

In a series of decisions, the Board
of Appeal of the Office for
Harmonization in the Internal
Market has overturned rulings of
the Cancellation Division in
which the latter had refused to
order the cancellation of the
Community trademarks (CTMs)
GERMANY 2006, WORLD CUP
2006, WM 2006, WORLD CUP
GERMANY and WORLD CUP
2006 GERMANY (Cases
R1467/2005-1, R1466/2005-1,
R1468/2005-1, R1469/2005-1 and
R1470/2005-1, June 30 2008)

American Airlines and Google settle US keyword dispute

Google Inc and American
Airlines quietly settled their
dispute over the search engine’s
controversial AdWords
programme in July (Case
07cv487 in the US District Court
for the Northern District of
Texas). The airline had
instituted proceedings against
Google, claiming that the search
engine had infringed its rights
by allowing competitors to
purchase American Airlines’
trademarks for use as keywords
to generate sponsored links

Dutch patent decision shakes up interpretation of ECJ’s Montex

A ruling relating to patents
issued in July by a Dutch court
has challenged the commonly
held belief that the European
Court of Justice’s (ECJ) decision
in Montex (Case C-281/05,
November 9 2006) means that
in-transit goods cannot be
seized under the EU Customs
Regulation (1383/2003)

Directory

International directory

Make sure that your firm’s details are always accessible to trademark practitioners and brand owners worldwide.

Country correspondent

Publicity and image rights

The new Privacy Law, which came into effect in 2006, enhances the protection of the rights to privacy and
publicity under the Federal Civil Code and the Copyright Law

Publicity and image rights

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

Publicity and image rights

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

Publicity and image rights

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

Publicity and image rights

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