Features
WTR’s exclusive Global Trademark Survey is a
groundbreaking attempt to calibrate the true
impact of the financial crisis on trademark
professionals worldwide. The results serve as a
warning that today’s challenging market looks
set to become even tougher
While all business models are likely to suffer in
times of recession, the franchising model is predicted
to fare better than most in terms of growth. Other
immediate benefits make it an option brand owners
should consider
David W Koch and Darrell M Johnson
In early 2008 the São Paulo State Court of Appeals
issued the first decision in Brazil extending the
principle of landlord, or in this case administrator,
liability to counterfeiting cases
Henry Knox Sherrill
A decision of the Second Circuit issued in early
2008 seems to confirm that the famous mark
doctrine does not apply in the United States – to
the dismay of many non-US brand owners
Although registered Community design rights were
introduced over six years ago, many important
issues remain unresolved. However, an analysis of
the 400 decisions issued by OHIM’s Invalidity
Division provides some useful guidelines
David A Stone
The Intel decision issued by the ECJ at the end
of 2008 puts a limit on the protection of
superbrands against the use of similar marks
on unrelated products or services. Some argue
that this may not be such a bad thing
The Russian legal system’s treatment of parallel
imports continues to have a major impact on some
Russian industries, particularly the automotive sector.
This article looks at the latest case law on the matter
Pavel Sadovsky
The WTR Industry Awards 2009, which will
be presented at a ceremony in Seattle timed
to coincide with the 131st INTA annual
meeting, honour leading trademark teams
across a range of industry sectors. WTR
speaks to some of the nominees
Halting the flow of counterfeits into India was never
going to be easy. Two years after the introduction of
new regulations to combat the problem, the
government has a new headache: mark owners who
say the regime is failing
Ahead of INTA’s annual meeting in Seattle from May
16 to May 20, the association’s president for 2009
shares his thoughts on, among other things, the effect
the economic downturn will have on trademarks and
the planned expansion of the generic top-level
domain space
The dispute over the WAHAHA mark between French
food giant Danone and a Chinese company was in the
headlines throughout 2007, but eventually came to a
head in 2008, when a Chinese court effectively put an
end to the dispute
Howard Tsang and Lilian Shi
Brand owners need to be ready to enforce their rights
anywhere in the world through all available means,
including alternatives to trademark remedies. Using
a fictional narrative, tracing distribution of
counterfeits from China to the United States and
Europe, via Dubai, IP experts provide tips on how to
tackle the problem in each jurisdiction
Omar Obeidat, Laurie Emmer, Hongxu Qin and Eva Den Ouden
Despite fierce criticism from IP rights owners, a new
bill, which is set to come into force in the near future,
will significantly water down India's criminal
enforcement system
Ranjan Narula and Darshan Ramamurthy
In the three years since WTR’s last Canada focus, a
number of significant changes have been made to
trademark law and practice. However, some argue
that the rate of progress in key areas is far too slow
Country Correspondent
Mark owners seeking a preliminary injunction must file their request with a local bailiff’s court while full infringement proceedings should be filed with the Maritime and Commercial Court – a specialized court.
Louise Unmack and Martin Sick Nielsen
The issue of how best to protect trademark
rights in China is one faced by many
multinational companies. This article aims
to provide some tips on successful
enforcement in China.
Meryl H Wang
Before the entry into force of the Trademarks
Act in 2001, trademark owners struggled to
enforce their rights before the courts. Further
amendments were introduced by Act
19/2006, which implemented the IP Rights
Enforcement Directive.
Joao Miranda De Sousa and Andrea Sirimarco
Trademark owners seeking to enforce
their rights in Norway should typically
start civil proceedings. However, mark
owners should also consider applying for
customs surveillance and should make
use of alternative resolution bodies for
solving unfair competition and domain
name disputes
Toril Melander Stene and Line Schartum-Hansen
Determining which court has jurisdiction
over a particular dispute is crucial for IP
rights owners. Russian law provides a
number of criteria to answer this question,
but uncertainty remains as to certain kinds
of IP cases
Aleksey Ivanov
New enforcement tools in Brazil are
encouraging trademark owners to litigate
to protect their rights and claim monetary
compensation for infringement
Rodrigo Borges Carneiro
European Union
EU legislation provides a number of means by which IP rights may be enforced. In addition, various proposals and initiatives are pending in relation to criminal sanctions and the fight against counterfeiting and piracy.
Alexandra Pygall and Daniel Royle
The implementation of the IP Rights
Enforcement Directive in Portugal
represented a turning point in the country’s
approach to enforcement. However, one year
on, many questions remain unanswered
Gonçalo da Cunha Ferreira and Francisca Ferreira Pinto
Trademark rights can be enforced in
Canada on the basis of both registered
and unregistered rights, under the federal
statute and the common law tort of
passing off. Remedies include
interlocutory injunctive relief, but
proving irreparable harm often presents
a tremendous challenge.
Mark Robbins and John Simpson
The enforcement of IP rights in India
remains inconsistent. While the Indian
judiciary regularly displays remarkable
flexibility with regard to protection, the
enforcement of IP laws by law enforcement
agencies leaves much to be desired
Ashish Prasad
Italian statutory law provides all the tools
necessary for the effective enforcement of
trademark rights. This is further
enhanced by the existence of specialized
IP sections within the courts. However,
some peculiarities of the Italian system
mean that the courts are swamped by
cases challenging the validity of
registered trademarks.
Donatella Prandin and Simone Verducci Galletti
Trademark owners have several means of
enforcing their rights in Benelux. In
addition, the scope and effectiveness of
enforcement actions have increased since
the implementation of the IP Rights
Enforcement Directive.
Paul Steinhauser and Milica Antic
Enforcing trademark rights in Israel can be done through the usual channels of the courts, the police and Customs. Filing petitions before the registrar of trademarks, particularly in cases of conflicting applications, should also be considered.
Kfir Luzzatto and Moshe Bartal
The debate surrounding the conflict between trademarks and trade names is not new in Romania. However, case law is developing, with certain courts finding that a trade name which infringes an earlier registered mark must be amended
Dragos Vilau and Ionut Lupsa
When it comes to enforcing their rights in
the United States, mark owners can
choose between a vast array of tools,
including arbitration, litigation and anti-counterfeiting actions.
Clark W Lackert and Courtland L Reichman
In Mexico trademark rights are enforced
mainly through the Trademark Office. The
enforcement of famous and notorious
marks is governed by specific rules.
Armando Arenas
Germany’s long tradition of trademark
right enforcement ensures that brand
owners are well protected. However, the
recent implementation of the EU Unfair
Commercial Practices Directive and the IP
Rights Enforcement Directive introduced
some small but noteworthy changes
Nils Weber and Katja Grabienski
