WORLD TRADEMARK REVIEW Issue 23

Opening the umbrella

Fabricio Vayra, senior counsel, intellectual property at
Time Warner, tells WTR about the challenges he faced
in creating a central IP department to support the
conglomerate’s various subsidiaries.

Country correspondent

Well-known and famous marks

There is a long tradition of protection for well-known marks in Israel, but trademark owners need to ensure
that they are fully exploiting the advantages of the system.

Well-known and famous marks

While legislation does recognize marks which have gained fame, the concept is not defined or explained
in the law or governing rules.

Well-known and famous marks

China has gradually enhanced the protection of well-known marks, but brand owners need to ensure that
they file for recognition when entering into legal action.

Well-known and famous marks

A recent marketing campaign highlights some of the intricacies inherent in Mexico’s trademark legislation.

Well-known and famous marks

Well-known trademarks in Norway are protected under the Trademarks Act and, to some degree, the
Marketing Act, which requires traders to follow good business practice in their transactions with each other.

Well-known and famous marks

The framework of protection for well-known and famous trademarks stems from existing Benelux legislation.
Recent decisions suggest that this system, as transposed into EU legislation and elaborated by further case law,
gives famous and well-known trademarks even greater protection than before.

Well-known and famous marks

While the courts are applying statutory provisions that afford protection to well-known marks, the lack of
guidance on the evidence required to prove that a mark is well known means that brand owners need to rely
on judicial precedents in their actions.

Well-known and famous marks

While courts take account of the fame of a mark when assessing the likelihood of confusion, all the
surrounding circumstances are considered – including evidence of consumer confusion and the connection
between the goods and services of the interested parties.

Well-known and famous marks

The protection of well-known and famous marks has long been disputed under Russian law, with the process
for registering a mark as well known challenging for brand owners.

Well-known and famous marks

While Italian legislation does not define what constitutes a well-known mark, their treatment as marks that
‘enjoy a reputation’ means that they enjoy wide protection.

Well-known and famous marks

In Denmark, it is recognized that well-known or famous marks require protection which is broader than
merely direct competition. However, to enjoy extended protection, documentation must be submitted which
confirms that the relevant consumers have a general and broad knowledge of the mark.

Well-known and famous marks

The scope of traditional trademark protection is expanding with the recognition of well-known marks and
marks with a reputation. Despite there being no legal definitions of these concepts, Portuguese doctrine and
jurisprudence are working towards solutions which will enable owners of such marks to defend their rights.

Well-known and famous marks

Famous and well-known marks are afforded extensive protection in Spain, but while ‘well-known’ and
‘reputation’ denote distinct legal concepts, English-speaking practitioners who are familiar with the
Community trademark system need to be careful they are not misled by the Spanish terms for such marks.

Well-known and famous marks

A recent decision has affirmed the principle that famous marks which receive recognition as highly
reputed marks following the BPTO procedure deserve protection in all fields of activity, regardless of the
possibility of confusion.

Features

A decade in European trademarks

WTR looks back at 10 years of CFI trademark rulings
and asks what challenges lie ahead for the newly
named General Court.

2010: Madrid to expand into Latin America?

After years of fierce debate and political
procrastination, several important jurisdictions
in Latin America seem poised to accede to the
Madrid Protocol in 2010. WTR investigates the
efforts to push through accession, and how brand
owners and local agents are adapting their
practices in preparation.

Industry predictions

WTR asked a range of trademark professionals,
industry representatives and legal specialists to
highlight the issues that they felt were most
significant in 2009 and what they anticipate as the
major developments in 2010, either in their specific
jurisdiction or on the international agenda.

Bridging the divide over Google

If the ECJ accepts the advocate general’s recent Google
opinion, its decision will have far-reaching effects on
the advertising industry by aligning the European view
more closely with that of the US courts. This would
have a number of consequences for brand owners.

The road to Asia

With many US motor industry brands being acquired
by Asian companies, challenges remain for both the
new owners and the US industry left behind.

A partial approach to damages

With the global economic slowdown hampering the
development of international markets, over the past
year the Chinese courts have issued new legal
interpretations in a bid to safeguard domestic growth.
However, this has led to courts that are more cautious to
award damages, often siding with local interests.

Breaking down the barriers

The marketing-trademark relationship is critical to
branding success, yet there is a longstanding
perception that the two departments are doomed.

Navigating the Russian legislative maze

Despite announcing that it will again pursue an
independent application for WTO membership,
fundamental issues of trademark enforcement and IP
protection in Russia still have not been addressed.

Delivering clarification

While it may seem logical for Community trademark
owners to expect pan-European remedies where
infringement is established in one member state, the
reality is somewhat different. A recent dispute over
express shipping could lead to some much needed
clarity on this issue.

Hidden dangers

Company and commercial names have a direct impact
on trademark registration in Russia. At present, the
non-registration of commercial names does not
prevent them from opposing registered trademarks –
meaning that potentially no mark is safe.

Managing the divorce

The dispute over the Danone-Wahaha joint venture
offers some valuable lessons for companies considering
partnerships in Asia. Many of the problems that can
arise are preventable through careful planning and an
understanding of local business culture.

News

Internet protection to be recommended

The adoption of mandatory
rights protection measures in
the new domain name space
will be recommended to the
board of the Internet
Corporation of Assigned Names
and Numbers (ICANN).

Mergers of IP law firms in United States predicted to rise

Thirteen law firm mergers were
recorded in the United States
during the third quarter of
2009 and WTR has been told
that the pace of consolidation is
expected to increase in 2010.

Spirit of harmonization drives funding and database initiatives

The World Intellectual Property
Organization (WIPO) and the
Office for Harmonization in the
Internal Market (OHIM) have
signed a memorandum of
understanding under which the
organizations will share and
develop their goods and services
classification databases.

Leaks undermine secretive ACTA discussions

Leaked documents containing
sections of the draft Anticounterfeiting
Trade Agreement
(ACTA) suggest that the treaty
may focus more on copyright
than on trademarks and the
fight against counterfeiting.

News in brief

Columns

The view onlineWhen good friends turn bad

Direct or contributory cybersquatting by
domain name registrars has yet to receive
much attention. However, if this problem
is not addressed, brand owners could find
the goodwill associated with their marks
hijacked by the very organizations they
rely on to oversee the domain space.

Counterfeiting perspectivesFighting the good fight

New legislation and international
agreements are set to fight the threat
from counterfeiters – yet still more can be
done to harmonize IP laws and
enforcement practices.

Trademark managementThe potential pitfalls of comparative advertising

Brand owners need to choose the course
of action taken over comparative
advertising in the United States carefully.