WORLD TRADEMARK REVIEW Issue 3

FIFA’s trademark tactics

The 2006 World Cup saw FIFA’s income from corporate
sponsors and licensees rise to unprecedented levels.
FIFA took various steps to keep the exclusive IP rights
of its sponsors secure, but although these measures
were largely successful, many felt that FIFA’s tactics
bordered on the draconian

Florian Schwab

Features

OHIM and the CTM – the practitioner’s perspective

As the CTM celebrates its 10th anniversary, practitioners
believe that it has been a success. However, that does not
mean there is not room for improvement

Reflecting on the CTM

One of the founding fathers of the CTM system gives
his views on how the system came to be and its first
10 years of existence

Nestlé’s winning formula for brand management

‘Enormous’ hardly begins to describe the trademark
portfolio of the world’s largest food and drink company
– and the workload involved in managing it. But when
it comes to finding the best solutions to protect these
very valuable assets, Nestlé has found that what works
best for it is looking for the answers in-house

Dealing with abusive company name registrations

The public perception of what a business name, domain
name and trademark respectively confer on the owner
or registrant is becoming increasingly blurred. This has
opened fertile ground for infringers. For instance, there
is a growing trend in Hong Kong in the incorporation of
company names that embody famous marks

Finding its feet: 10 years of OHIM practice

Created out of a void, the pan-European system of
trademark registrations run by OHIM has exceeded
all expectations in the numbers of applications filed
as well as in the way it has impacted on trademark
owners’ protection strategies in Europe

OHIM and the CTM – the in-house perspective

To mark the 10th anniversary of the CTM, World
Trademark Review spoke to in-house counsel at three
companies that are among the highest filers of CTMs
to hear their views on OHIM’s performance so far

Shaping trademark case law for Europe

In the 10 years since the launch of the CTM system,
the EU courts and the Boards of Appeal have produced
an impressive body of case law covering areas such as
registration, use, validity and enforcement

Pacific Brands leaves sub-licences in an ocean of uncertainty

Transferring licences and sub-licences and assigning
the associated rights is all part and parcel of the
trademark game. However, according to one wellrespected
commentator, a decision by an Australian
appeal court may have changed the rules

Columns

Trademark managementThe changing face of trademark management

Technical and legal changes to trademark
registration allow trademark professionals
to move away from the administrative
aspects of portfolio management and
focus on the role of trademarks in the
business. This changing role calls for fully
dedicated trademark professionals and a
budget to match

Counterfeiting perspectivesThe positive side of fakes

Everyone thinks that counterfeiting
and other forms of IP crime are always
damaging, right? Well, no actually

The view onlineWikipedia – A valid source for trademark matters?

A legal storm is brewing over the use of
Wikipedia, the online encyclopaedia, as a
valid source in trademark decisions, as well
as general legal matters. While Wikipedia
has been cited by numerous US federal court
opinions in the last year and in three recent
decisions of the USPTO Trademark Trial and
Appeal Board, is it acceptable to use a source
that is a moving target, changeable by
almost anyone at almost any time?

Brands from the frontlineMarks in the media

Brand protection in the media industry
comes with its own set of challenges.
Conducting programme name clearance
under time pressure and making guesses as
to the likely lifespan of a programme when
deciding priorities for trademark protection
are two of the problems the in-house media
trademark lawyer will encounter

Roundtable

The Latin perspective

Countries in Latin America are of increasing importance to trademark
owners. In this roundtable, practitioners from four of the region’s most
important jurisdictions discuss the latest developments

News

News