World Trademark Review Issue 25

June/July 2010

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


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

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

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.


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.


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.


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

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.


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.