WORLD TRADEMARK REVIEW Issue 18

Inside track – Daimler

The head of trademarks at Daimler speaks to WTR
about fulfilling his childhood dream, simplifying
trademark law and surviving the economic downturn

News

News in brief

News focus

WTO decision on US-China dispute over TRIPs raises global questions

News focus

USPTO puts a limit to fraud

Lead story

‘Smell-alike’ opinion from ECJ’s advocate general provokes confusion

Country correspondent

Trademark prosecution and registration strategies

European Union

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.

Trademark prosecution and registration strategies

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.

Trademark prosecution and registration strategies

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 and registration strategies

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

Trademark prosecution and registration strategies

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.

Trademark prosecution and registration strategies

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.

Trademark prosecution and registration strategies

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 and registration strategies

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.

Trademark prosecution and registration strategies

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.

Trademark prosecution and registration strategies

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.

Trademark prosecution and registration strategies

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.

Trademark prosecution and registration strategies

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.

Trademark prosecution and registration strategies

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.

Trademark prosecution and registration strategies

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 and registration strategies

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

Columns

Counterfeiting perspectivesThe WCO recipe for combating the fake trade

Strengthening enforcement, building
capacity and raising awareness are all part
of the World Customs Organization’s plan
to curb counterfeiting and piracy. The
programme for 2009 includes the creation
of extra tools to enhance operations and
promote the exchange of information

The view onlineIs a wolf in Grandma’s clothing confusing or just initially confusing?

As initial interest confusion on the
Internet continues to divide the courts,
our columnists suggest that they focus
less on initial confusion and instead apply
the traditional confusion test

Trademark managementIt’s crunch time – are your IP assets ready?

As IP budgets are likely to be cut along
with the budgets of most other in-house
departments, it is time to review some key
elements to ensure that the trademark
department remains on top form

Features

Nordic know-how on the up

The global slowdown is starting to bite in the larger
trademark services markets of the Nordic region.
However, some firms feel that strong cross-border
expertise will give them an edge in an increasingly
competitive field

The shape of three-dimensional mark protection in Israel

Last year the Israeli Supreme Court issued two
decisions that seemed to reverse the Trademark
Office’s restrictive practice regarding the registration
of three-dimensional marks. However, the
interpretation of these rulings by the Trademark
Office indicates that the issue is far from settled

Enforcement Directive divides opinion

Five years since EU member states agreed to
harmonize IP enforcement, WTR reassesses the
project in a major survey of corporate counsel
and private practitioners

China’s dilution of the dilution doctrine

While Chinese law does not specifically recognize
dilution, new analysis of 100 of the most recent cases
shows that some courts have been applying dilution
principles. However, the Supreme Court’s latest
guidelines indicate that China is a very long way from
adopting the US approach to dilution

Evolving approaches to jurisdiction in Europe

In relation to online infringement, some
jurisdictions may appear friendlier to mark
owners than others. But before assessing the
facts of a case, the relevant court will need
to accept jurisdiction. Case law on this issue
is developing in Europe

Replanting roots

Brand owners and producers in the Arab world are
calling for better protection of geographical
indications. WTR investigates what is being done

Singapore Treaty all set to streamline application systems

The Singapore Treaty signed nearly two years ago
mainly tackles procedural changes. However, its
coming into force in March acts as a reminder that
streamlined and harmonized trademark application
procedures are far from being a reality across the world

Marks, forfeiture and a constitutional conundrum

In Autumn 2008 a US district court ordered the
forfeiture of marks owned by a gang known as the
Mongols on the grounds that the gang engaged in illegal
activities. While the forfeiture of property is provided
for under various US statutes, this case raises more than
its fair share of legal and constitutional issues