WORLD TRADEMARK REVIEW Issue 29

The business of intellectual property

At the Foster’s Group, intellectual property is
embedded into the corporate DNA. For IP director
Owen Malone, this approach reflects the global trend
towards recognising the commercial role that
intellectual property plays

News

OHIM president outlines bold anti-counterfeiting plans

New Office for Harmonisation in
the Internal Market (OHIM)
President António Campinos has
signalled his intention to embrace
an enforcement role for the
agency, promising to work with
national offices to create a united
front against counterfeiters.

Associations voice concern over ‘forgotten’ trademarks

The British Brands Group and
Institute of Trademark Attorneys
(ITMA) have joined forces to voice
serious concerns at the approach
that the United Kingdom’s
coalition government is taking to
intellectual property, with
trademarks often absent from
political debate.

ICANN bows to government pressure regarding new gTLD concerns

The board of the Internet
Corporation for Assigned
Names and Numbers (ICANN)
has resolved to meet with
government representatives to
clear up their remaining
concerns over trademark
protection in the proposed
infinite generic top-level
domain (gTLD) space.

Global View

For regular jurisdictional updates, see WTR Daily. Delivered straight to your inbox, WTR’s regular email news service provides legal updates, industry analysis and the editor’s pick of the best trademark content from around the globe.

SEPAF expels Albihns.Zacco

Albihns.Zacco AB has been
expelled from the Association
of Swedish Intellectual Property
Law Firms (SEPAF) for breach of
the organisation’s ethical rules.

Country correspondent

Internet issues (other than domain names)

As the Internet becomes increasingly
popular, online trademark infringement is
becoming more common. As a result,
traditional trademark protection methods
have had to be adapted in order to take the
unique characteristics of the online
environment into consideration.

Internet issues (other than domain names)

The Internet provides new means for
infringing registered rights. Such activities
started with registration of domain names
incorporating a trademark – widely known
as cybersquatting (fortunately, there has
been much progress in this field) and
typosquatting – and evolving to trademark
and copyright infringement through,
among other things, keyword advertising,
gripe sites and phishing scams.

Internet issues (other than domain names)

Companies are discovering that their
trademarks are being used in ways that
could not have been imagined a few years
ago. For example, companies can purchase
and use a competitor’s trademark as a
‘keyword’, and then use these keywords to
trigger internet advertising for their own
products and services.

Internet issues (other than domain names)

Since the early 1990s the Internet has
become incredibly popular; according to
Netcraft research, as of October 1 2010 there
were more than 232 million active websites.
It is impossible to imagine life without the
unlimited opportunities that it offers. However, people use the Internet for
many different purposes, some of which
may be against the law.

Internet issues (other than domain names)

It is Saturday afternoon and Journey’s iconic
song “Don’t Stop Believin’” is playing on a
US college student’s computer. Next up on
the playlist is something by Dave Matthews,
followed by U2, Michael Jackson, The Rolling
Stones and The Beatles: a well-thought-out
playlist of tunes that have remained
popular throughout the years.

Internet issues (other than domain names)

According to research recently published by
Maria de las Heras on www.elpais.com,
around 30 million people in Mexico use the
Internet, with each person spending an
average of three and a half hours a week
connected to the Web. Considering that
Mexico has a population of approximately
106 million, this means that about 28% of
Mexicans use the Internet.

Internet issues (other than domain names)

The Google AdWords service and keywords in
general are a current hot topic in the internet
domain. For many years consumers have
found the Internet to be the best marketplace
for all kinds of goods and services. In
particular, search engines help consumers to
locate products from particular brands
among all those available in cyberspace.

Internet issues (other than domain names)

For many businesses, a high ranking on
internet search engine results is vital in
directing internet users to their websites.
Google’s AdWords programme has proved a
valuable tool for many businesses in
attracting internet users to their websites.
However, as a significant proportion of
internet searches are conducted against
terms that are trademarks, Google elected to
include trademarks within its AdWords
programme, allowing anyone to bid for
another party’s mark for use as an AdWord.

Internet issues (other than domain names)

Online advertising is a major industry. The
Interactive Advertising Bureau of Canada
reports that in 2009 Canadian online
advertising revenues were C$1.82 billion, and
forecasts that in 2010 revenues will rise to
C$2.1 billion.
In recent years the tension between
online advertising and consumer privacy
has given rise to several controversies.

Features

Protecting your brand in the social media space

An internal policy on social media use becomes a
strong weapon when policing external use of your
brand, but communication is key – with both internal
staff and those actively policing the online world

Identifying the world’s leading trademark firms and practitioners

The World Trademark Review 1000 will present
exhaustive rankings of the leading law firms,
attorney firms and individual practitioners offering
high-level trademark advice in more than 50
jurisdictions. In this exclusive preview, we reveal the
most cited firms in terms of the number of offices
and individual practitioners identified
as leaders in the field across the globe

The real zombies exist solely on the books

Brands that are not used but kept alive in company
books are not dead – they are wasted money-making
opportunities

The first Cyrillic TLD: when the best-laid plans go awry

Despite careful planning, the launch of Russia’s
top-level domain (TLD) proved problematic and
highlights some of the trademark issues that can
arise during TLD launches

Resurrecting abandoned trademarks – a question of perception

Many trademarks have fallen victim to the recession,
creating an opportunity for those seeking to
reanimate abandoned marks and use them for
commercial gain. While possible in most
circumstances under US law, there are exceptions

When is a zombie not a zombie? Capitalising on brand heritage

Resurrecting disused brands requires a proper analysis
of product lines, industry trends and the consumer
mindset. A survey of previous attempts to revive brands
may help in predicting the likelihood of success

Cyber spiders: an anti-counterfeiting technique with legs

As web technology advances and enables brand owners to investigate the sale of counterfeit goods online more meticulously than ever before, how is the burgeoning market in anti-counterfeiting search services evolving?

A top-down approach: creating a resilient IDN strategy

Following the introduction of internationalised
domain names, brand owners need to take clear steps
to ensure that their domain name strategy reflects the
new multi-character environment, at both top and
secondary levels

Career opportunities – transitioning from in-house to private practice

While they may appear to be two sides of the same coin,
moving from an in-house trademark role into private
practice requires proper consideration, with both
personal and professional factors coming into play

Talking point: industry predictions 2011

WTR asked a range of trademark professionals,
industry representatives and legal specialists to
highlight the issues that they felt were most
significant in 2010 and what they anticipate will
be the major developments in 2011

Reducing risk – international perspectives on survey evidence

The divergent treatment of survey evidence in
different jurisdictions poses significant challenges in
creating a survey that will work internationally.
However, this is not impossible and certain tactics,
carefully deployed, can yield positive results

The trademark triangle: the tension between owners, firms and service providers

Thanks to elaborate brand-building strategies, the
trademark service provider sector is booming. Some
insiders even suggest that it now competes on an
equal footing with the legal profession. WTR charts the
evolution of this market and considers how its future
may unfold

Brand valuation post-ISO 10668: from the jungle to the Garden of Eden?

The new international standard on brand valuations
has been viewed by some as bringing new clarity to a
complex and fragmented industry. But will ISO 10668
really cut through the confusion surrounding brand
valuation techniques?

Tuning in to the dangers – protecting television formats

Few disputes over television format rights have
centred on trademark rights, but format owners
need to approach the creation and protection of
their formats in the same way as they would any
international brand launch

Columns

Time for trademark counsel to get their heads into the cloud

Cloud computing creates many legal
issues, from jurisdictional questions to
privacy and security concerns. For brand
owners, the cloud can be an especially
frustrating place, but by understanding
the legal and business issues involved, IP
risks can be balanced and mitigated

Ending the ‘whack-a-mole’ problem?

No sooner do brand owners succeed in
shutting down an infringing website than
it pops up in a new location. A proposed
US bill aims to step up the fight against
online counterfeiters

Time for a social network trademark dispute policy?

Just when trademark lawyers thought that
they had domain names under control,
here come social network usernames. Is
the trademark industry prepared?