WORLD TRADEMARK REVIEW Issue 18

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.

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.

Germany is Europe’s largest economy, so
careful consideration should be given as
to how best to protect trademarks in this
key jurisdiction.

Trademark prosecution in Canada presents
many unique features, including some
disparities with the systems in place in its
neighbour – the United States.

Knowledge of the law is one thing, but
more needs to be considered when
thinking of adopting a new trademark in
Benelux. In this article some strategic
considerations are discussed.

Russian legislation for trademark
protection has certain peculiarities that
need to be taken into account when
planning to enter the Russian market and
choosing a strategy for trademark
protection.

While Romania has a longstanding
tradition of protecting trademark rights,
issues relating to its accession to the
European Union make the development of
registration strategies tricky.

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.

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.

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.

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.

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.

Trademark prosecution in Brazil presents
specific challenges – the most obvious and
difficult of which is the substantial backlog
at the Trademark Office.