WORLD TRADEMARK REVIEW Issue 25

INTA the future

Heather Steinmeyer, president and chair of the board
of directors of INTA and lead counsel for intellectual
property at WellPoint, Inc, outlines the challenges for
the year ahead

Features

A foot in the door Getting trademarks on the corporate agenda

As the world’s only magazine dedicated to trademark
law and practice, WTR is uniquely positioned to take
the pulse of the industry. Our second annual Global
Trademark Survey illuminates exactly where
trademarks stand in the corporate structure

Expanding marketplace presence to enhance brand legacy: legal issues in trademark licensing

Having decided that your brand is suitable for
extension, the next critical consideration is the
construction of a trademark licence agreement that will
not have negative repercussions for your brand legacy

Growing clarity in South Africa

In the latter part of 2009, South Africa’s Supreme
Court of Appeal handed down four noteworthy
trademark judgments

Charting the development of the trademark industry through INTA

An analysis of INTA membership and annual meeting
participation and programmes, compared against
available industry data, serves as a useful barometer
of the trademark industry

Court actions propel Brazil onto world stage

While last year Brazil won headlines for securing the
right to host high-profile sporting events, important
court decisions on the enforcement of trademark rights,
the use of foreign language terms, parallel imports and
marks of high renown received less publicity; but they
lie at the heart of the country’s success

Searching for legal resolution – how keywords stayed high on the court agenda in 2009

One of the most hotly debated topics in European trademark law
over the past few years has been the question of whether the
unauthorized use of a trademark as a keyword within a paid online
referencing service (eg, Google’s AdWord programme) constitutes a
use of that mark which the trademark owner may prevent under EU
or national trademark law.

Branding opportunities: don’t let familiarity breed contempt

Brand extensions afford companies the opportunity to
leverage loyalty to established brands; but diffusion
needs to be the result of a clear and logical analysis of
the brand's attributes

A mark apart – taking a three-dimensional approach to protection

The advocate general’s opinion on LEGO’s attempts to
register its building block as a 3D mark attempts to
tackle inconsistency in the approach to registration.
Given the uncertainty, many brand owners are asking
how useful such marks actually are

Talking point: Google keywords

The Court of Justice of the European Union (ECJ)
decision on the questions referred by the French Court
of Cassation in joined Cases C-236/08, C-237/08 and C-
238/08 found that Google’s use of trademark terms as
keywords does not constitute infringement.

Defining protection in Israel

The position of Israeli courts on three-dimensional
and well-known marks was clarified in 2009

Protecting fashion brand extensions – lessons from the pharmaceutical industry

IP protection in the fashion industry has been subject
to little external regulation to date, with some
arguing that taking inspiration from others is central
to the industry’s success. However, things are
changing and there are lessons to be learnt from the
pharmaceutical experience

Criticism website disputes: searching for a middle ground

Criticism websites can be problematic for trademark
owners, which are turning to the UDRP more
frequently to tackle such issues. However, this is one
of the main areas of contention among panellists,
with conflicting views on how to address the
complexities involved

When enforcement becomes bullying

A trademark owner has a legal duty to police its mark.
But when does good-faith, albeit aggressive, protection
of trademark rights become bad-faith bullying based
on a claim of rights which do not exist?

Judicial activism contributes to Chinese trademark law development

Guidance issued by China’s Supreme People’s Court
has had a significant impact on the decisions handed
down by the Chinese courts over the past year

At your service

WTR’s exclusive survey asked trademark counsel around
the world to identify those companies to which they
outsource their trademark and domain management,
and how they rate them. Here are the results

TTAB developments: Bose and beyond

The Bose decision deservedly dominated the headlines
in 2009, but a number of rulings from the Trademark
Trial and Appeal Board also merit close attention

Industry Awards 2010

The WTR Industry Awards 2010, which will be
presented at a ceremony in Boston timed to
coincide with the 132nd INTA annual meeting,
honour leading trademark teams and
individuals across a range of business sectors.
In this issue, we officially unveil the shortlist.

Country correspondent

Domain name management

A number of issues are raised by the registration of ‘.it’ domain names, but these need to be overcome as
ownership of domain names is crucial to obtain IP rights that can be defended against third parties.

Domain name management

It is not normally feasible to register all possible domain name variations to protect your trademark, so
brand owners need to carefully consider their selection methodology.

Domain name management

The management of a well-structured domain name portfolio is at the heart of successful trademark
protection and, crucially, will help to prevent costly actions later.

Domain name management

With the ‘.рф’ domain extension approved, it is important that trademark owners plan registrations now,
or risk costly enforcement action later.

Domain name management

Use of a ‘.ca’ domain is often expected by Canadian consumers, but there are obstacles to registration
and cybersquatting remains an issue.

Domain name management

The time has come for brand owners to fight back against online infringement.

Domain name management

There are a number of obstacles for foreign companies to overcome when registering a ‘.br’ domain name.

Domain name management

While the Romanian domain name registry has assumed less responsibility than similar bodies in other
jurisdictions, brand owners have a number of legal tools to protect their interests online.

Domain name management

The IL-DRP plays a significant role in the resolution of domain name disputes through out-of-court
proceedings. However, the source of its legal authority and the binding force of its decisions are uncertain.

Domain name management

With more companies doing business in India, ‘.in’ domain names are coming under increasing demand.

News

Filings fall as recession takes toll on trademark sector

The latest World Intellectual
Property Organization (WIPO)
statistics reveal that
international trademark filings
under the Madrid system fell by
16% in 2009, in a stark
illustration of the impact of the
global financial crisis.

Letters

The Trademark Technical and
Conforming Amendment Act
2010 provides for a study to
examine “the extent to which
small businesses may be
harmed by litigation tactics by
corporations attempting to
enforce trademark rights
beyond a reasonable
interpretation of the scope of
the rights granted to the
trademark owner”. The act was
sponsored by Senator Patrick
Leahy (Vermont), in whose
state Monster Energy Drinks
sought to prevent a
microbrewery’s use of the
mark VERMONSTER for beer.

Global view

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

Google verdict to spark rise in trademark enforcement costs

The Court of Justice of the
European Union (ECJ) has found
that Google’s use of trademark
terms as keywords does not
constitute infringement, but
noted that the advertiser’s use
likely will – a decision which
could cause the cost of online
enforcement to rocket.

Official ACTA text fails to quell fears

The parties negotiating the
Anti-counterfeiting Trade
Agreement (ACTA) have
published a full draft of the
controversial treaty, which
closely mirrors previously
leaked texts and has sparked
fears that the World Intellectual
Property Organization (WIPO) is
being undermined.

Columns

The view online

The USPTO allows in-world use to qualify
as ‘use in commerce’ for purposes of
trademark registration, but how should
brand owners protect their marks in virtual
worlds and drive real-world profits?

Trademark management

The recent Audi decision provides
trademark owners with useful guidance
over the development of slogans

Counterfeiting perspectives

New holographic technology is
increasingly being utilized to help brand
owners to tackle counterfeiting, but it will
succeed only if used in tandem with good
old-fashioned collaboration

Roundtable

Creating a global approach

While litigation is usually regarded as a last
resort in the event of infringement,
sometimes it is difficult to avoid. In such
cases it is important to ensure that you
have the right strategy in place –
particularly when the infringement has a
cross-border dimension. Nowadays, when
problems can arise in many corners of the
world, the need to think ahead and
understand how systems work in different
countries is greater than ever.