WORLD TRADEMARK REVIEW Issue 24

Tackling IP change at Pernod Ricard

Audrey Yayon-Dauvet, group IP director at Pernod
Ricard, explains how she shaped the company’s IP
function to match the corporate culture

Columns

The view onlineBucking the UDRP trend

Trademark practitioners should pay close
attention to a recent WIPO decision which
could set a precedent on the ‘identical or
confusingly similar’ element in domain
name disputes

Counterfeiting perspectivesA sporting chance of success

With a number of international sports
tournaments heading to the region,
counterfeiting in Latin America looks set
to surge. For brand owners, now is the
time to review their protection strategies

Trademark managementGetting in a pickle over the distinction of marks

While many marks avoid becoming
generic due to the use of the term in ‘the
trade’, a 2004 case could still pose future
problems if courts follow its reasoning

Country correspondent

Anti-counterfeiting

In the face of increased levels of counterfeiting, Romanian law provides a range of important protections
for brand owners.

Anti-counterfeiting

Although the country lacks both a centralized IP rights database and a standard procedure for border
seizures, a range of anti-counterfeiting measures are available in Brazil.

Anti-counterfeiting

The Spanish spend an average of €285 million on counterfeit goods. While this poses a challenge to
trademark owners, protections are available through both Customs and the courts.

Anti-counterfeiting

With Italy’s policing bodies boasting internal departments to investigate IP infringement, and a range
of actions possible, the country is well-geared to tackle the counterfeiting threat. However, brand owners
must also ensure they police the threat themselves.

Anti-counterfeiting

Over the last few years, both Customs and the courts have become more proactive in the fight against fake
goods, with the new Industrial Property Code set to provide further clarification on the extent of IP rights.

Anti-counterfeiting

A number of recent cases highlight the anti-counterfeit protections brand owners can draw on.

Anti-counterfeiting

While few counterfeit goods actually originate in Russia, brand owners need to be aware of the protections in
place to guard against the impact of infringements.

Anti-counterfeiting

Like the manager of a professional sports team, trademark owners bear the pain and glory for their teams’
success and failures. However, China’s trademark laws and enforcement methods can help you turn that ‘L’
into a ‘W’.

Anti-counterfeiting

Despite a lack of specific remedies for counterfeiting in Canada, there are still options for brand owners.

Anti-counterfeiting

There are a number of enforcement procedures open to brand owners to enforce their rights, but the
selection process is critical to success.

Features

Brand politics

Governments around the world are finally waking
up to the importance of brands. WTR investigates how
some are now strategizing how to propel domestic
brands onto a global stage

Talking point: ACTA

The content and format of the Anti-Counterfeiting
Trade Agreement (ACTA) negotiations are hot topics of
debate, with commentators questioning whether the
agreement will deal with anti-counterfeiting at all or
rather focus on copyright infringement in the digital
environment. The secretive nature of the discussions,
which has been characterized by a series of document
leaks, has also come under fire. WTR speaks to Stan
McCoy, assistant US trade representative for intellectual
property and innovation at the Office of the US Trade
Representative (USTR), for the latest on the discussions
and asks industry commentators for their views

Preparing for the future pharmaceutical trademark regime

While the outcome of the US FDA pilot programme on
trademark approval is not due until 2011 at the earliest,
the scheme offers important pointers for those
considering the development of a pharmaceutical mark

Different shades of grey in Canadian and US approaches to parallel imports

While Canadian and US trademark laws have become
relatively ill suited to preventing parallel imports,
there are still instances where their effectiveness can
be maximized

The winding road towards harmonization in Latin America

In the last issue of WTR we examined moves to adopt the
Madrid Protocol in Latin America. At present, a number
of protections are available to mark owners across the
region – but it is very much a changing picture

Increasing the accuracy of brand valuations

A forthcoming international standard will set out best
practice for brand valuation – and could fundamentally
alter the relationship between the trademark and
marketing functions

Seizing the initiative over goods in transit

The recent seizure of pharmaceutical goods in Europe
has reignited the debate over how goods in transit are
treated – with political interests and economic threats
threatening to muddy the legal waters

When imitation is not the sincerest form of flattery

Deciding what action to take against infringers can be
difficult enough – but what happens when you have an
economic partnership with the infringer, as is the case
with supermarket lookalikes?

Working with Customs to stem the counterfeit tide

There are few, if any, downsides to working closely
with customs authorities and enforcement agencies
in the fight against illicit trade. But creating a
meaningful relationship is not always as
straightforward as it should be

When parody stops being a laughing matter

Recent disputes involving Starbucks and The North
Face have highlighted the issue of parody as a defence
against trademark infringement. While courts have
taken different approaches to defining fair use parody,
practical lessons can be learnt from previous cases

News

INTA defends position over ‘hijacking’ accusations

INTA has responded to criticism
that it tried to “hijack” an online
consultation regarding the new
generic top-level domain (gTLD)
programme, and urged the
Internet Corporation for
Assigned Names and Numbers
(ICANN) to reform its mode of
inviting participation

Letters

This month, WTR Daily
reported on industry reaction
to the decision of the Canadian
Intellectual Property Office
(CIPO) to open a new
consultation on updating the
country’s Trademarks Act,
with the potential adoption of
the Madrid Agreement a key
issue. WTR asked CIPO to
outline why the consultation
has been opened at this time

Confusion and speculation surrounds CTM ruling

A ruling of the Benelux Office of
Intellectual Property (BOIP) has
created uncertainty over what
constitutes genuine use of a
mark in the European Union
However, speculation has also
surfaced over the motivations
behind the case.

Opinion builds a new approach to assessing shapes

LEGO has been dealt a new blow
in its attempts to register its
building block as a 3D mark,
with the advocate general of the
ECJ arguing that the company
should not be granted an EU-wide
trademark for the shape

Global view

WTR presents a round-up of news from around the globe

Debate sparked after shock proposal over CTM surplus

The study into the functionality
of the European trademark
system, being conducted by
researchers from the Max
Planck Institute (MPI), is
moving at a fast pace, with
visits to national offices due to
conclude in March. However,
much of the debate
surrounding the study has
centred on concerns over its
focus after a surprising
contribution from the Office for
Harmonization in the Internal
Market (OHIM)