WORLD TRADEMARK REVIEW Issue 27

Peter Dengate Thrush: the internet’s ringleader

On the cusp of the new generic top-level domain application period, ICANN Chairman Peter Dengate Thrush tells WTR that the trademark community may have delayed the process enough and that the board may be ready to force it into submission.

News

Mattel loses out on billion-dollar brand

A judge in the US Court of
Appeals for the Ninth Circuit
has handed the Bratz doll brand
back to MGA Entertainment,
overturning the district courts
earlier judgment after which
Mattel claimed victory.

‘.co’ woos trademark owners in spite of domain bad actors

The Colombian registry behind
the widely marketed ‘.co’ toplevel
domain name has
reiterated that it will continue
to champion the rights of
trademark owners.

Final blow for AB InBev’s BUDWEISER trademark

Anheuser-Busch InBev has
failed in its 14-year effort to
register its famous BUDWEISER
mark as a Community
trademark (CTM) in the
European Union. The Court of
Justice of the European Union
(ECJ) ruled on July 29 that
Budejovický Budvar’s earlier
rights in Germany and Austria
were sufficient to show genuine
use of the mark in the
Community and could
therefore block AB InBev’s
application.

New doubts cast over ICANN’s expected gTLD decision

The process to reach consensus on the trademark protection
mechanisms proposed for the
new generic top-level domains
(gTLDs) has encountered
another delay, just ahead of
September’s expected decision
on the matter.

Global view

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

Country correspondent

Publicity and image rights

The need for the Indian legislature to recognise publicity and image rights in a statutory manner has never been greater. Celebrities increasingly seek to protect their
publicity and image rights due to the rising
commercial value of their fame and
identity.

Publicity and image rights

Although publicity and image rights might
appear to have most in common with
copyright, of all IP rights, this is not in fact the
case. Copyright concerns property, whereas
publicity rights concern privacy.
The use of images may or may not be
commercial – commercial use comes to mind
when the image of a famous person is used.

Publicity and image rights

A number of legal protections are available for the protection of publicity and image rights.

Publicity and image rights

Italian law provides strong protection for personal names and portraits as trademarks. The relationship between image protection and trademarks is defined by the few articles in the Industrial Property Code that deal specifically with images and personal names in relation to trademarks.

Publicity and image rights

While national jurisprudence defends the nature of the image right as a personality right with important patrimonial value, economic exploitation can arise from the broad scope for negotiation in comparison to other personality rights.

Publicity and image rights

Those wishing to protect their image or name need to navigate trademark law, issues surrounding freedom of expression, the Privacy Protection Law and Unjust Enrichment Law.

Publicity and image rights

Image rights are fundamental rights enshrined in the Spanish Constitution, yet a number of factors hamper effective judicial protection.

Publicity and image rights

Legislation on image rights is becoming increasingly necessary. With the rapid development of China’s
market economy and the emergence of new
forms of marketing models, there is a
growing interest in new forms of property
rights – image rights – to deal with the
growing commercial value of celebrities’
fame and identity.

Publicity and image rights

In Canada, personality rights enjoy common
law and statutory protection, stemming
from an individual’s publicity rights (which
are proprietary in nature) and the right to
privacy (a personal interest). In terms of
common law protection, the tort of
misappropriation of personality is available
to individuals (outside Quebec) who have
suffered economic injury as a result of the
violation of their publicity rights.

Publicity and image rights

The forthcoming Civil Code will dramatically impact on image rights protection. The protection of image rights was first
acknowledged in Romania in the 1991
Constitution, but only as a general and
indirect principle (as a limit to the freedom
of expression).

Features

Navigating the Trademark Trial and Appeal Board

To achieve success in pleading before the Trademark Trial and Appeal Board (TTAB), it is important to understand the differences between opposition proceedings in the United States and Europe, as well as grasping the intricacies of TTAB proceedings themselves. Successful navigation of the system can not only increase your chances of success, but also save money.

Canada's faithful: avoiding fraud claims at the IPO

Bose may have shaken the world of US practitioners, but now their Canadian counterparts are considering whether two decisions at home could signal a trend towards a Medinol
-style approach to misstatements in trademark applications

Foul play in sports branding - the marketer's perspective

The results of a six-month study present a unique insight into marketing perspectives on sports brand protection and suggest a growing need for marketers to work more proactively on legal protection mechanisms

Policy matters: trademarks in the real world

Trademark law is not practised in a bubble. Smart trademark
counsel know that their team must dovetail with other departments in order to meet the companys strategic objectives. They also understand that beyond the registration certificates lies a world where brands brighten up store shelves and billboards. The in-house trademark counsel is a nexus not just between internal teams, but also with the outside world. It is thus vital that trademarks are viewed in their wider commercial and political context.

Auction sites: time for a history lesson

Frederick Mostert, chairman of the Walpole IP & Brand
Protection Working Group, suggests that the solution
to the problem of trademark piracy on online auction sites can be found by drawing on historical experience

Goodbye to the man behind Europe's trademarks powerhouse

As he prepares to vacate the president's chair at the
European trademark agency, Wubbo de Boer reflects
on his decade-long tenure and shares his thoughts on
OHIM's future

Trademarks, video games and the First Amendment: an evolving story

As video games become more realistic and more
interactive, the issue of in-game trademark use raises
new concerns. And a traditional trademark
infringement analysis may no longer be suitable

Community trademark courts - dream come true or work in progress?

Almost 20 years after the enactment of EU Regulation (40/94), the path to a uniform CTM system still has a number of obstacles to overcome

The 2010 World Cup - practical lessons in brand protection

An analysis of the counterfeiting and ambush
marketing challenges experienced in South Africa
reveals some valuable lessons for brand owners
and event organisers

OHIM - the year in review

It has been a busy year in Alicante. While efforts to tackle the
backlog of opposition files and long processing times continued, the Office for Harmonisation in the Internal Market (OHIM) also launched TMview, unveiled and implemented the initial framework within which national offices and users can apply for support from the 50 million OHIM Cooperation Fund, found itself proposed for potential anti-counterfeiting responsibilities and appointed a new president (the latter resulting in questions over the selection process after just one name was forwarded for consideration by the European Council).

Columns

Trademark management

Rumours recently circulated that the
trademark function would be spun off
from India's patent and trademark office.
With the office still burdened with a significant backlog of work and accession to the Madrid Protocol looming, would
such a move be a help or a hindrance?

The view online

Domain name infringers target names that deliver the greatest return on investment. Familiarising yourself with their tactics, and using that knowledge to protect your intellectual property, is key in the fight against cybersquatting

Counterfeiting perspectives

Let's face it: we are not yet winning the war against counterfeit products. Despite the introduction of stronger laws with tougher penalties, improved enforcement resources and better training for customs officers in
intercepting and identifying fakes, each year the illicit trade expands. This has led to a growing belief that the fight cannot be won solely by measures aimed at disrupting the
supply of such goods.

Roundtable

Taking the fight to the counterfeiters

Practitioners from around the globe offer practical advice on creating an effective, budget-friendly anti-counterfeiting strategy