WORLD TRADEMARK REVIEW Issue 21

Inside track – MARQUES/Coty Prestige

Ahead of the annual MARQUES conference in Brighton,
United Kingdom, from September 15 to 18, the chair of
the Association of European Trademark Owners
outlines the organization's strategy and shares his
thoughts on key issues affecting the trademark industry
in general, and the Coty Prestige group in particular

Features

Assessing the overhaul at OHIM

WTR’s exclusive survey of the CTM system explores the reaction from leading filing agents to the cut in fees
and gauges OHIM’s performance over the past year

Private lives and publicity rights

Using a famous person’s identity to promote a product
or service can be very tempting for marketers, but if
handled incorrectly it can lead to publicity right
claims that may extend beyond the celebrity’s lifetime

Smart thinking on phonewords

Word telephone numbers, which substitute numerals
with letters, have been widely used in the United States
for years, but as they become more common in other
countries, it is time to consider the risks such numbers
pose, in particular with regards to domain names

Updating the Lanham Act for the internet age

The development of the Internet has exacerbated the
conflicts and uncertainty in US trademark law – to the
point where it now seems necessary to amend the
Federal Trademark Act

At the edges of protection in Latin America

Border protection in Latin America is a complex
operation. However, some countries, including
Argentina, have introduced highly effective new
measures that may inspire change across the region

Running like clockwork

BP recently announced that it has scrapped its head
of trademarks role. WTR examines the thinking
behind this decision and wonders what the move
says about how corporations can align their
trademark practice with the core business strategy

Country correspondent

Pharmaceutical trademarks

The Indian courts have adopted the
principle of trans-border reputation to
protect foreign pharmaceutical marks that
have not been registered in India.

Pharmaceutical trademarks

Spanish practice on pharmaceutical
trademarks reflects recent developments
at EU level. This article examines the
relationship between such marks and
international non-proprietary names
and the criteria for determining the
relevant public.

Pharmaceutical trademarks

The main issues presented by
pharmaceutical trademarks in Benelux
concern their descriptiveness, the relevant
public and parallel imports

Pharmaceutical trademarks

Substantive legislative changes have
opened the door to the parallel
importation of pharmaceuticals in Israel.
Parallel importation cannot be prohibited,
unless the goods undergo substantial
changes such that they can no longer be
attributed to the mark owner.

Pharmaceutical trademarks

Pharmaceutical trademarks in Portugal must meet both the requirements for registration as a trademark and those for eligibility as a medicine name, which are much stricter.

Pharmaceutical trademarks

Trade dress issues in relation to
pharmaceutical products have become more
apparent in Brazil as trade in generic drugs
increases. Luckily, local law provides
adequate protection against imitation.

Pharmaceutical trademarks

Inconsistencies in approach to the test of
likelihood of confusion make it difficult
to evaluate in advance the risks associated
with adopting a pharmaceutical
trademark in Italy.

Pharmaceutical trademarks

Pharmaceutical trademarks must clear a
number of hurdles, including distinct and
independent reviews by the US Patent
and Trademark Office and the Food and
Drug Administration.

Pharmaceutical trademarks

As in most other jurisdictions, in China
pharmaceutical companies must navigate
a dual system of registration and approval
of their trademarks and the commercial
names of their products.

Pharmaceutical trademarks

Part IV of the new Civil Code establishes
the basic regime for the protection of
pharmaceutical trademarks in Russia.
Rights holders must also be aware of
legislation governing the use of
medicines, and practice at the Patent and
Trademark Office and the courts.

Pharmaceutical trademarks

The EU courts have wrestled with the
likelihood of confusion test for
pharmaceutical marks over the years,
often coming to seemingly conflicting
conclusions. The Romanian courts, on
the other hand, have preferred to keep
things simple and have taken a more
consistent line.

Pharmaceutical trademarks

Many trademark challenges are specific to
the pharmaceutical industry. Issues include
whether clinical trials can be considered
trademark use in Canada – a prerequisite to
trademark registration – and the limited
extent to which pharmaceutical
trademarks can be used in advertising.

Pharmaceutical trademarks

As with all EU member states, Denmark
tightly regulates the use of
pharmaceutical trademarks. This analysis
examines how Denmark has aligned
itself with the EU model.

Pharmaceutical trademarks

A drug marketing authorization can be
granted only if the name applied for
varies by at least three letters from
previously registered names. However,
this rule is now being challenged

News

New USPTO director confirmed

David Kappos has been
confirmed as the new director
of the US Patent and Trademark
Office

News in brief

Tough stance taken on non-traditional marks in Europe

A number of rulings from across
Europe indicate that courts are
taking a hardline approach to
non-traditional signs and shape
marks in particular.

EU Customs Regulation clarified and criticized in key decisions

The EU Customs Regulation
(1383/2003) is coming under
increased scrutiny from brand
owners. Some are suggesting
that its wording is unclear and
prevents Customs and the
courts from taking necessary
action

Russia issues new guidelines on revocation

The Russian Patent and
Trademark Office has issued
guidelines to clarify the
circumstances in which a party
may file a request for the
revocation of a trademark on
the grounds of non-use

Columns

The view onlineNavigating new networks

The rapid pace of development in the world
of Web 2.0, and social media sites in
particular, could be seen as a benefit to
brand owners, but it has also raised new
concerns regarding trademark infringement

Trademark managementTaxing decisions for trademark managers

While it can be expensive to acquire,
maintain and enforce trademark rights in
the United States, it is crucial to bear in
mind that some of the costs associated
with trademark management may be
subject to significant tax deductions

Counterfeiting perspectivesToo much pressure

UK Customs no longer accepts witness
statements from mark owners as the basis
to dispose of counterfeit goods seized at
the border. This will translate into
significant cost increases for brand owners