World Trademark Review Issue 28

December 2010/January 2011

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


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

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

On the same track

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


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.


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.


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?

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.