WORLD TRADEMARK REVIEW Issue 17

Impact of economic downturn on brand value

In March 2008 brand valuation consultancy
BrandFinance® published its BrandFinance 500
survey, which ranks the world’s most valuable brands.
As a result of the turmoil in the world economy
BrandFinance updated the results in September 2008,
revealing a significant decline in brand values

David Haigh

Features

France in flux

The French market for trademark services could be set for a radical overhaul in the very near future. Practitioners and brand owners await the developments with interest

Entrepreneur tug of war

For decades
Entrepreneur Magazine has been fighting
the allegations of small businesses, multinationals and
aggressive critics that its trademarks are generic and
invalid. The magazine's spat with Ernst & Young sets the stakes higher than ever before. WTR investigates

The problem with purple

The Cadbury group has been trying to obtain exclusive rights in a shade of purple for chocolate in Australia since 1998

The danger of developing a two-tier system

A decision of the European Court of First Instance not
to apply Article 6 ter of the Paris Convention to service
marks is proving controversial. If upheld on appeal,
the decision will open the door to the registration of
national emblems as part of service marks is proving controversial. If upheld on appeal, the decision will open the door to the registration of national emblems as part of service marks something that is prohibited for trademarks.

The challenges of the post-dot age

The proposed launch of new generic top-level
domains in 2009 is likely to cause an unprecedented
shake-up to the domain name system. It will
inevitably cause a considerable burden on rights
owners who will need to reconsider their online
strategies carefully

Protection of well-known marks after Intel

With its Intel ruling, the ECJ has attempted to clarify
dilution law in Europe. However, the decision has been
seen as a blow to the owners of 'superbrands' and appears to favour the common law approach of requiring claimants to prove actual or likely damage

Overcoming Canada's registration hurdle

Non-Canadians may obtain a registration in Canada based on a corresponding registration in the country of origin. However, such applicants should be aware that the registration in the country of origin must be accompanied by use

The trademark experts' experts

WTR spoke to a number of leading practitioners in France to find out who they rated as the best in the trademark law business. Here are the names that were mentioned most

Country correspondent

Internet issues

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

Internet issues

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

Internet issues

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.

Internet issues

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.

Internet issues

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

Internet issues

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

Internet issues

OLIVARES

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

Internet issues

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

Internet issues

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

Internet issues

The Indian courts have had to address many
legal issues arising from the development of
the Internet – from passing off to phishing,
metatagging and jurisdictional matters

Internet issues

Italian courts are still divided over the
criteria to use to establish jurisdiction
over infringement occurring online

Internet issues

Contextual online advertising is big
business in Russia, much of it potentially
infringing. A lack of clear law in this area
makes enforcing trademark rights
almost impossible

Internet issues

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

Internet issues

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.

Columns

Trademark managementThe lowdown on trademarks in an insolvency

Trademarks are important to the value of an insolvent business. The business may prove more valuable if split and, if so, its trademarks will be divested separately. This may give rise to practical and legal problems

Counterfeiting perspectivesINTERPOL’s role in the global fight against counterfeiting

Anti-counterfeiting and piracy operations carried out by INTERPOL in various parts of the world have been extremely successful. The INTERPOL IP Rights Programme became truly global when it was deployed in Africa in 2008

The view onlineThe pitfalls of the revised '.cn' DRP

Nearly three years after the rules governing '.cn' domain name disputes were amended, there appears to have been no significant drop in the number of decisions favourable to complainants. Enforcement of these decisions is another matter entirely–

Roundtable

Ads, marks and avoiding trouble

Practitioners from the United States and Europe discuss the trademark issues involved in advertising