WORLD TRADEMARK REVIEW Issue 28

Talking point: three-dimensional trademarks

The ECJ has ruled that Lego’s iconic brick cannot be
registered as a trademark because its shape is
necessary to obtain a technical result. WTR asks
trademark practitioners for their reaction to the
decision and the lessons to be learnt

Features

MARQUES: practical lessons from Berlin

With summer holidays already a distant memory,
almost 600 trademark counsel descended on Berlin
for the MARQUES annual conference this September.
WTR presents the highlights of the programme,
starting with the debate over changes to Google’s
AdWords policy

Time to be positive? Google’s AdWords policy in focus

While brand owners may be apprehensive about
Google’s decision to bring its AdWords policy in
Europe into closer alignment with the position in the
United States, should the move be welcomed with
open arms?

Time to join forces? Co-branding considerations for trademark owners

While stormy economic conditions may make cobranded
ventures more enticing, brand owners must
consider all the potential trademark issues that can arise

Adapting to new environments – trademark licensing in Asia

Asia is becoming an increasingly important market for
trademark owners. However, when entering into
trademark licensing agreements, brand owners should
not ‘copy and paste’ the rulebook developed in the West

Navigating the path to Madrid

The Trademarks (Amendment) Bill 2009 takes India
one step closer to accession to the Madrid Protocol.
Although this is a positive development, questions
remain about the national office’s ability to deliver
on the detail of the bill

Doing the right thing? The dangers of environmental claims

With more companies highlighting ‘green’ credentials
when promoting their products, the authorities are
clamping down on unqualified claims. For trademark
counsel, the use of environmental claims should be
closely monitored

Brave new world: How the trademark community is preparing for new gTLDs

This autumn, WTR conducted an in-depth survey to find out how industry is
preparing for the launch of new gTLDs. The data reveals how outside counsel
are devising new business models, what marketing professionals really think
and how brand owners are bracing for their greatest trademark challenge yet

Building bridges – Libya takes a new approach to trademarks

As Libya endeavours to attract overseas investment,
key questions centre on the level of trademark
protection on offer and how the regime compares to
others in the region. Do the latest changes go far
enough and will brand owners trust a regime that
previously discarded over 20 years of registrations?

A healthy approach to brand management

The United States and European Union take different
approaches to health claims in trademarks and on
packaging. For trademark counsel, an appreciation of
these differences is key to avoiding costly mistakes in
either region

When trademarks meet branding – the case of the fluid mark

The fluid mark stands at the crossroads between
marketing and trademarks – presenting dangers to
both when logos are tampered with

On the same track

WTR hears both sides of the Siemens story in an
exclusive interview with the company’s trademarks
and brand teams

News

Change to Google AdWords programme comes under fire

Google’s liberalisation of its
AdWords programme in Europe,
allowing advertisers to include
third-party trademark terms in
advert text, has been “strongly
criticised” by trademark owners.

Global View

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

Controversial treaty negotiations almost complete

The full text of the Anti-
Counterfeiting Trade Agreement
(ACTA) has been published,
following the conclusion of the
final round of negotiations in
Japan on October 2 2010. The
meeting in Tokyo saw the parties
to the treaty reach agreement in
principle, with only a few issues
outstanding.

Letters

Use WTR’s letters page to comment on issues raised in
the magazine and WTR Daily, and to air your views on
the industry.

Renewal split demands “difficult” legislation, de Boer warns

Wubbo de Boer has stated that
national offices will need to
justify the receipt of Office for
Harmonisation in the Internal
Market (OHIM) funds under the
50% renewal split arrangement,
arguing that it is not enough for
the agency to warrant paying
out money on the basis that it
had to “bribe” national offices
to agree to changes under the
September 2008 compromise
solution.

MEPs slam national offices over challenge to the CTM system

Michel Barnier, the European
commissioner for the internal
market and services, has waded
into the genuine use debate,
sending a stern warning to
national offices challenging the
Community trademark (CTM)
system.

Country correspondent

Unregistered trademarks

In Italy, the Civil Code and the Industrial
Property Code ensure protection for
unregistered marks, as well as other
unregistered commercial signs (eg, insignia,
business names and company domain
names), but such protection is subject to
strict conditions and a number of
restrictions.

Unregistered trademarks

While trademark rights can exist whether a trademark is registered or not, the advantages afforded to
registered marks, whether in respect of enforcement, remedies or provincial regulations, make registration
the recommended route to follow.

Unregistered trademarks

In the United Kingdom, a brand owner can
protect its unregistered trademarks and
commercial signs through the common law
right of passing off. This concept has been
developed through case law and
manipulated to encompass a wide variety of
anti-competitive practices.

Unregistered trademarks

Russia is a first-to-file country and
therefore, according to Russian legislation,
trademark rights apply from the moment
that the mark is state registered. No rights
derive from the use of an unregistered
trademark. However, when Part IV of the
Civil Code came into force in January 2008,
it afforded a degree of protection to
commercial indications or signs.

Unregistered trademarks

All trademarks that are used in economic
activity may be grouped into certain
categories. This article focuses on registered
trademarks (ie, those which have been
granted protection by a decision of the
Patent Office) and trademarks which have
not been registered (ie, no official decision
on granting protection has been issued), but
which enjoy similar protection.

Unregistered trademarks

Unregistered trademarks are protected under Romanian law if they are recognised as well known. Other
commercial signs, such as trade names and company logos, enjoy some level of protection under trademark
and unfair competition law.

Unregistered trademarks

In the Spanish legal system, exclusive rights
over a trademark or trade name are obtained
through registration. Such registration
confers on the proprietor exclusive rights in
the relevant sign and allows it to prevent
unauthorised third parties from using the
sign in the course of trade.

Unregistered trademarks

In the United States, protection is available
for unregistered marks under common law
and the federal statute known as the
Lanham Act (§ 43(a)(1), 15 USC § 1125(a)(1)
(1989)). The owner of a valid but
unregistered mark can seek recourse against
the copyist in state and federal courts.

Unregistered trademarks

Unregistered trademarks, such as trade
names, get-ups, trade descriptions, labelling
or packaging and other commercial signs,
are protected in Israel under various
grounds and actions.

Unregistered trademarks

In India, the primary legislation governing
trademark protection is the Trademarks Act
1999. The right to institute infringement
proceedings under the act is available only
to the proprietors of a registered trademark.

Unregistered trademarks

There are two types of unregistered
trademark. The first, type A, is a trademark
that is not registered in any class of goods or
services within its jurisdiction; the second,
type B, is a trademark that is registered in one
or more classes or subclasses, but not in the
class or subclass concerned in the dispute.

Unregistered trademarks

Trading under an unregistered mark is
never a good decision. However, there are
certain rights which, under Mexican law,
may allow you to continue its use.
The way in which commercial signs are
protected varies from country to country.
However, all legislation follows common
objectives.

Unregistered trademarks

In Portugal, in order to obtain exclusive
rights in respect of a distinctive sign used in
trade, a decision of grant must be issued by
the competent administrative body, the
Trademark and Patent Office. The sign may
consist of a trademark or a logotype – a
Portuguese category of rights which, since
the revision of the Industrial Property Code
(Decree-Law 143/2008), includes names and
emblems of establishment.

Columns

Don’t believe all you read – fakes are not fine

Media coverage of a recent British Journal of
Criminology article focused on claims that it
encouraged the purchase of fake luxury
goods and suggested that counterfeits
benefit both consumers and brand owners.
However, the author notes that the
headlines were deceiving and wants
industry to assist in ongoing research

Australian trademark law is not colour blind

Despite the difficulties in registering
colour marks, the Whiskas Purple case
provides comfort to brand owners seeking
to protect colours

Is Google’s European confidence misplaced?

On the back of recent ECJ decisions,
Google has implemented a number of
changes to its keyword advertising
system. However, is the upcoming
Interflora ruling likely to signal another
change in the European legal landscape?