WORLD TRADEMARK REVIEW Issue 20

The name game

The Uniform Doman Name Dispute Resolution Policy
(UDRP) celebrates its 10th anniversary this year at a
time when the entire domain name system is on the
cusp of change. Now seems the perfect moment to
reflect on the achievements of the UDRP over the past
10 years and to assess the challenges that lie ahead for
trademark owners as the Internet opens up to new
generic top-level domains (gTLDs). In this two-part
special, domain name experts from Silverberg Goldman
& Bikoff first provide a detailed analysis of landmark
rulings issued under the UDRP since its creation; WTR’s
Adam Smith then examines the latest controversy
surrounding the expansion of the gTLD space.

Country correspondent

Non-traditional trademarks

Non-traditional signs enjoy broad
protection in the United States as long as
they can function as trademarks.
Nonetheless, proving acquired
distinctiveness may be challenging for
those signs, such as product designs, that
lack inherent distinctiveness

Non-traditional trademarks

The Indian Intellectual Property Office is
putting together a manual on trademark
practice and procedure which provides
thorough guidelines on the requirements to
register non-traditional marks. This article
examines the latest proposals in detail.

Non-traditional trademarks

Although the definition of ‘trademark’
under the Industrial Property Law is
restrictive, most non-traditional signs can
enjoy a degree of protection in Brazil

Non-traditional trademarks

Even though the traditional view that
trademarks can consist only of visual
signs lingers in Romania, shapes, sounds
and colour combinations may be
registered as trademarks. Case law
regarding other non-traditional marks,
however, remains limited.

Non-traditional trademarks

Spanish trademark law and practice are
bound by EU regulations and case law.
However, the Spanish Patent and
Trademark Office is even more reluctant
than the EU trademark bodies to register
unconventional marks.

Non-traditional trademarks

The definition of ‘trademark’ in Mexican
law is restricted to signs that can be
perceived visually. In practice, the
Trademark Office narrows this definition
further – for instance, by not granting
registration to colours unless they are
combined with other distinctive elements.

Non-traditional trademarks

The protection afforded to non-traditional trademarks in Benelux is governed in large part by EU regulations and case law. However, Benelux courts are often prepared to grant protection where the EU instances are not.

Non-traditional trademarks

In principle, any sign that is distinctive
and can be represented graphically may be
registered as a trademark in Denmark, but
these requirements often prove to be
insurmountable hurdles for non-traditional
marks.

Non-traditional trademarks

Three-dimensional trademarks can be registered in China as long as they are distinctive and non-functional. However, trademark owners should be aware that similar shapes may already have been registered as patent designs.

Non-traditional trademarks

The conservative approach of the Patent and Trademark Office and the courts to the protection of non-traditional
trademarks, as well as limited national case law on the issue, mean that much remains to be clarified with regard to the scope of protection of such signs.

Non-traditional trademarks

Israeli law recognizes a broad range of signs as being registrable as trademarks. However, the Trademark Office’s practice on this matter is rather restrictive.

Non-traditional trademarks

Three-dimensional shapes can be
protected under trademark, industrial
design and/or copyright law in Canada.
To obtain immediate and comprehensive
rights, brand owners should consider an
integrated strategy combining all three
protection schemes.

Non-traditional trademarks

Part IV of Russia’s Civil Code provides for the
registration of an array of non-traditional
trademarks. But graphical representation
may be an issue in some cases.

Non-traditional trademarks

Although a number of non-traditional
signs are protectable as trademarks under
EU law, Portuguese law and practice are
rather more restrictive.

Non-traditional trademarks

Non-traditional marks

are, by and large,
protectable in Norway, with the restrictions
imposed across the European Union also
applicable in this non-EU country.

Columns

Trademark managementIs there a fiduciary claim in relation to licences?

Besides the usual, already daunting rights
and obligations involved in a licence
agreement, a recent decision revisits the
claim that a fiduciary relationship may
exit between licensors and licensees

Counterfeiting perspectivesTime to push through unified trademark law in Gulf region

The penalties imposed on counterfeiters
in the Gulf region are not stringent
enough to act as a deterrent. Brand
owners are calling for a rapid
implementation of the Unified Gulf
Cooperation Council Trademark Law to
help them in their fight

The view onlineClarification on keyword advertising now urgent

Courts from five different EU jurisdictions
have referred questions to the ECJ with
regard to keyword advertising. Further
guidance on the issue is vital

News

News in brief

New guidelines on well-known marks released by China’s top court

As part of its continuing efforts
to protect well-known marks,
the Adjudication Committee of
China’s Supreme People’s Court
has issued an “Opinion on
Certain Issues Concerning the
Protection of Well-Known Marks
in Civil Disputes”.

L’Oréal at centre of key European decisions

Cosmetics giant L’Oréal was
involved in three eagerly
awaited decisions from courts
in Europe in the past few weeks
– but with mixed results.

Landmark US parallel imports decision issued

The US Court of Appeals for the
Second Circuit has ruled that
unique product codes (UPC) are
protected under trademark law
(Zino Davidoff SA v CVS
Corporation (Case 07-2872-cv,
June 19 2006)). It is a
breakthrough in the fight
against counterfeit and greymarket
goods.

Features

.trademark: the battle over the new domain space

Innovations appear online daily. The next big thing
will undoubtedly be the expansion of the generic
top-level domain space next year, but brand owners
fear that the step could undermine their rights.
WTR joins the debate

Spanish revolution

The global downturn and changes to domestic practice
and procedure have altered Spain's prosecution and
enforcement landscape significantly. WTR takes a
detailed look at the effects on the Spanish legal market

Preserving prestige

With demand for luxury goods tumbling, many brand
owners are looking to licensing as a means of boosting
income. A recent decision from the ECJ could help
them maintain a firmer grip on their rights

On the defensive

In the current economic climate is defensive
registration a proactive means of securing
protection for global brands or a risky venture in
light of well-established use requirements?

The UDRP turns 10

A review of the UDRP’s defining characteristics and key
decisions is in order as the policy prepares to celebrate
its 10th anniversary at a time of intense speculation
regarding the future direction of the Internet

An insight into China’s top trademark cases

Among the top 10 cases of the year selected by the
Chinese People’s Supreme Court, five were of key
significance to trademark owners. The selection
criteria left many puzzled, but a new analysis shows
that each decision is remarkable in its own way

Awards night

Over 150 senior IP professionals attended the third
WTR Industry Awards (www.Industry-Awards.com)
at the stylish Greg Kucera Gallery in Seattle on
May 19 2009. Representatives from the nominated
teams mingled with leading private practice lawyers
at the exclusive champagne reception in honour
of the world’s top in-house trademark counsel.
WTR wishes to thank all nominees and sponsors
for helping to make the Industry Awards 2009 such
a successful event.

Sleepless in Seattle

The International Trademark Association’s (INTA) annual meeting is
still the most important – and busiest – event in the trademark
community’s calendar. This year the conference returned to Seattle
for the “greenest annual meeting” ever, as Katrina Burchell, head of
trademarks at Unilever and co-chair of the meeting, explained at the
opening ceremony. “We live in a competitive world,” Burchell said.
“Trademarks are key to winning that battle, so brands are jumping
on the environmental bandwagon.” INTA leapt on board too this
year, with its special theme of corporate social responsibility. In this
section, WTR looks at some of the meeting’s many highlights, so
numerous that one delegate said she was “too busy to sleep!”.

New directions for laches defence

The laches defence can prove an effective weapon for
striking out a trademark infringement claim in the
United States. However, a controversial ruling from
the Ninth Circuit may have served to raise the
evidentiary burden placed on defendants

Industry Awards 2009

On May 19 2009 WTR announced the winners
of its third Industry Awards at a ceremony in
Seattle. The awards are designed to recognize
the vital work done by in-house trademark
counsel, and identify the teams and individuals
that are performing their functions to the
highest possible standards. The following pages
feature profiles of the winners