World Trademark Review Issue 22

December 2009/January 2010

Philips – managing a master brand

Philips restructured its trademark management system just before the recession began to bite. This now looks like a smart move, as it further streamlined the company's protection and value extraction processes at a critical time

Features

Sealing the deal

The co operation fund has ignited an animated debate across the European Union. WTR asks whether the money can harmonize Europe’s fragmented trademark system once and for all

Judge versus jury: key tips for success

The decision on whether to try a case before a judge or a jury is a vital part of US trademark litigation strategy. Picking the wrong option can prove damaging

Philips – managing a master brand

Philips restructured its trademark management system just before the recession began to bite. This now looks like a smart move, as it further streamlined the company's protection and value extraction processes at a critical time

Proof of distinctiveness now a lottery in South Africa

South African trademark law has historically followed a similar path to EU legislation. However, a recent ruling from the Supreme Court on distinctiveness through extensive use appears to signify a dangerous departure from European precedent

Damage limitations

Most litigation is geared towards obtaining an injunction, but damages are often well worth pursuing. The challenge for rights holders is that the requirements for obtaining an award tend to differ in each federal circuit

India's opposition gridlock

Opposition backlogs have reached alarming levels in India. The Intellectual Property Office’s new controller general claims to be taking steps to rectify the problem, but recent cases show that rules designed to curb unnecessary delays are being abused

The future of selective distribution

Selective distribution can be vital to preserve brand image. Competition policy is changing in Europe and rights holders must be aware of the implications

The dangers posed by Bose

By overturning the Medinol doctrine on fraud, the Federal Circuit has removed the threat of cancellation hanging over many trademarks, but the decision re-opens the door to falsely obtained registrations in clear breach of the Trademark Law Revision Act

New insight on the pillars of US trademark practice

Prosecution and litigation are two central columns supporting the business of protecting trademark rights in the United States. The first of those pillars has undergone a significant change in recent months, while the second remains as complex as ever. In this three-part special, WTR examines and provides guidance on the latest developments at the US Patent and Trademark Office (USPTO) and the federal courts.

News

Further budget cuts expected for 2010

Turmoil in the world economy continues to affect the trademark industry, with organizations slashing costs in a bid to weather the storm.

News in brief

ICANN criticized for approach to rights protection

The Internet Corporation for Assigned Names and Numbers (ICANN) has come under fire from brand owners over its handling of the trademark protection policy for the expanded generic top-level domain (gTLD) space developed by the Implementation Recommendation Team (IRT).

China moves to fight fraud

The protection framework in China continues to develop with the China Trademark Office bringing into force the Regulation on Issues in Relation to Trademark Assignments.

Google wins first round in landmark European AdWords case

The advocate general of Europe’s highest court, Luís Miguel Poiares Pessoa Maduro, has given his backing to Google’s AdWords system,

Columns

Counterfeiting perspectivesProtecting fortress Europe

While brand owners seek a common approach to the treatment of goods in transit, counterfeiters are using the current rules to hide their tracks. Without urgent attention, the tide of fake goods could overwhelm rights holders’ defences

Trademark managementGenericide or clever marketing?

The pace of change on the Internet means that a mark could potentially become generic within a matter of months. But is the use of a mark as a verb, so often the first step to ‘genericide’ in the past, now really such a bad thing? Is it time to allow marks “to verb up”?

The view onlineInternet service provider liability: the devil’s in the detail

At first glance, two recent landmark US decisions suggest a divergence in approach to online contributory trademark infringement. Scratch under the surface, though, and consistency in the application of previous rulings becomes apparent

Country Correspondent

Advertising

A boom in advertising over the past 10 years is reflected in the development of related legislation. However, there is limited case law from the courts in this field due to the significant enforcement powers of regulatory bodies.

Advertising

Russian advertising law is not extensive and can be ambiguous, but an analysis of recent cases reveals that the legislation is, for the most part, interpreted intuitively.

Advertising

The ECJ’s decision in the O2 Case has clarified key issues unique to Benelux. However, inconsistencies in approach are still apparent.

Advertising

In a landmark decision, the High Court of Madras has attempted to tighten the rules on comparative advertising. However, the ruling may have opened the door to inconsistency in the interpretation of the law in this area.

Advertising

A recent high-profile marketing initiative by a Mexican pharmaceutical company appears to be a clear example of unfair competition. This article puts the campaign in context and looks at the likely outcome for the advertiser.

Advertising

While a fully joined-up European advertising policy remains a dream, at least the Danish system has been updated to provide comprehensive coverage. Moreover, individuals have a strong ally against unfair advertising in the shape of the Consumer Ombudsman.

Advertising

Is the online use of a third-party mark to link through to competitor products lawful? Case history in Israel to date shows an increasing leniency towards this activity - Oren Mandler and Kfir Luzzatto analyze the reasons why.

Advertising

Advertisers must take into consideration provisions of the Consumer Code and Legislative Decree 145/2007 when devising a marketing campaign. Any breach of the rules could lead to the advertisement being suspended and a fine.

Advertising

Often the best way to make a product stand out is to compare it to competing products on the market. However, while powerful, comparative advertising treads a fine legal line between good business and unfair competition.

Advertising

Norwegian law offers several means of enforcement against unfair and comparative advertising. This article analyzes the options available and provides an overview of recent amendments to the Marketing Control Act.

Advertising

Brazil’s new fondness for comparative ads has highlighted ambiguities in the legal regime in this area. However, there is considerably more certainty over ambush marketing: the country’s selection as host of the 2014 World Cup and the 2016 Olympics have already prompted bills on the subject.

Advertising

Facebook is bringing in new privacy measures in response to criticism in Canada over its handling of personal data. The new approach looks likely to have an impact on mark owners' advertising strategies.

Advertising

The legislation on unfair and comparative advertising has its roots in the rules on unfair competition. The introduction of changes to the Advertising Code in 1998 clarified the law by implementing the EU Comparative Advertising Directive.

Advertising

The sprawling legislative regime governing advertising, along with a fragmented administrative system, means that practitioners must stay on their toes when trying to determine whether an advertisement is permitted in Spain.