WORLD TRADEMARK REVIEW Issue 30

Talking point: chocolate animals and three-dimensional marks

The General Court has ruled on the registrability
of three-dimensional trademarks in a number of
decisions centred on chocolate animal shapes. WTR
asks trademark practitioners for their reaction to the
decision and the lessons to be learnt

Features

Are brand owners doing enough to help anti-counterfeiting efforts?

This year’s Global Congress on Counterfeiting and
Piracy saw more than 900 anti-counterfeiting
professionals descend on Paris. WTR presents the
highlights of the programme, which saw calls for
more engagement from the private sector

Cleaning up the streets – preventing the sale of counterfeits in the European Union

Despite efforts to stop counterfeit products at source,
the sheer diversity of distribution channels makes it
impossible to prevent illicit products being offered to
consumers. Brand owners therefore need to be as
creative and flexible as the foes they face

Many unhappy returns: watch out for fakes sneaking in through your back door

Brand owners carefully monitor markets to ensure
that counterfeits are not reaching consumers, but
are they doing enough to ensure that they are not
themselves being supplied with counterfeit versions
of their products?

Under the hammer: are trademark auctions bane or boon?

Whether through bankruptcy proceedings due to
recent economic conditions or companies identifying
new business models, trademark auctions are more
visible now than ever before. Yet there is much to
consider before raising your hand to reserve those
desirable trademarks

Taking on the mob – protecting your social game with trade dress

Social game developers operate in a fast-moving, competitive marketplace, where traditional
applications of trademark law may no longer provide comprehensive protection. However,
recent disputes involving Mafia-themed games suggest that all is not lost

Street markets and trade fairs – practical investigation advice

The right approach to counterfeit investigations
not only will increase effectiveness, but it can also
generate brand protection profit

Follow the trail: a two-pronged approach to counterfeiting in China

Successfully tackling the availability of counterfeit
goods in China requires that attention be paid both to
the source of illicit products and to the venue in which
they are being sold

Locating the missing link between trademarks and innovation

Innovation, the buzzword of the new economic models, is
breaking out of the patent bubble as more and more people
recognise its relationship with trademarks. WTR investigates

Time for national offices to fight counterfeiting? In South Korea, it is already happening

In Europe, there has been debate about OHIM taking
on an anti-counterfeiting enforcement role. In Korea,
the Intellectual Property Office is one step ahead,
having launched its own special judicial police squad

The brand valuation minefield – avoiding the most common mistakes

For those seeking to value their brands, the industry
offers a confusing array of methodologies. Take a
wrong turn and the results can be significantly skewed

Managing expert witnesses – going beyond the evidence

The successful use of expert witnesses does not rely
solely on the nature of their evidence. Litigators would
also be well advised to consider courtroom protocol
and psychology

Targeting purchasers and landlords in Thailand’s battle against counterfeiting

With the country on the Office of the US Trade
Representative’s Priority Watch List, a new bill has
been introduced to strengthen the anti-counterfeiting
options available to trademark owners. Will it prove
a game changer?

Can I get a witness? Strategies for litigation success

Expert witnesses can make or break your litigation
strategy. While expert evidence is an invaluable tool,
mistakes made in the planning stage can prove
extremely costly later

Your $30 million licence to sue ICANN

As the controversial domain name expansion
approaches, litigators are circling. WTR looks at the
possible legal grounds for lawsuits against the policy
and the $30 million fund designed to fight them

Keeping all eyes open – the Burger King approach to trademarks

Cecelia Dempsey explains how the Burger King
Corporation utilises all available resources to fight
infringement – with franchisees playing a vital role

Country correspondent

Trademark registration and prosecution strategies

In Russia, in order to file a trademark
application, it is not necessary to submit
material proving use of the mark or even
intention to use. However, before filing a
trademark application, certain general
points should be taken into account in order
to ensure that proper protection for the
trademark is obtained.

Trademark registration and prosecution strategies

Applications for registration of words or logos
may include multiple filing bases, including
use, proposed use and use and registration
abroad. If an application is filed based on
proposed use, the applicant will ultimately
need to file a declaration of use attesting to use
of the mark in Canada before the application
will proceed to registration.

Trademark registration and prosecution strategies

As the Chinese language is fundamentally
different from Latin language, businesses
planning to tackle the Chinese market must
have a Chinese version of their trademarks.
One question that must be dealt with
before filing a trademark application is how
to select the appropriate Chinese equivalent
of the original trademark.

Trademark registration and prosecution strategies

Brand owners should note that the enforcement of rights before the Polish courts is more effective if
a trademark owner enjoys protection under the national system.

Trademark registration and prosecution strategies

In the United Kingdom, trademark rights
are protected in two ways – by statute
through an action for trademark
infringement and by common law by
means of a ‘passing off’ action. In order to
obtain statutory protection, a trademark must
be registered.

Trademark registration and prosecution strategies

In the United States, practitioners should be
wary of a host of issues before filing a
trademark application. As a baseline, in order
to anticipate and head off problems during
prosecution, it is prudent initially to conduct
a full trademark search.

Trademark registration and prosecution strategies

The Mexican Institute of Industrial Property can often be subjective in its interpretation of the law, making it crucial for applicants to approach the authority to discuss any areas of uncertainty. This can result in significant savings.

Trademark registration and prosecution strategies

The Italian Patent and Trademark Office can hardly count itself among the
world’s most efficient industrial property
offices. However, recent developments show
that it is taking steps in the right direction.
This is partly due to efforts made by the
Italian legislature which, since 2005, has
introduced a number of measures aimed at
reorganising the IP system, particularly in
regard to the trademark system.

Trademark registration and prosecution strategies

Applicants applying for trademark
protection in Germany are likely to perceive
the German Patent and Trademarks Office
(GPTO) as an accessible institution which
takes a reasonably cooperative approach to
the registration process. For example,
wherever possible, applicants will be
informed of any objections that the GPTO
may have at an early stage in the
proceedings, so that they can clarify
uncertainties or submit observations to
defend the application.

News

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.

INTA hits back at criticism of website relaunch

The International Trademark
Association (INTA) has
relaunched its website,
introducing a refreshed mark
accompanied by a new slogan,
“Powerful network powerful
brands”.

gTLD programme delayed as trademark concerns continue

The expected March 2011
launch of the new gTLD
programme was in doubt as
WTR went to press, with Peter
Dengate Thrush, chair of the
Internet Corporation for
Assigned Names and Numbers
(ICANN), acknowledging that
approval of the final applicant
guidebook could be delayed.

Brand owners snap up unsold marks

Although the first-ever public
trademark auction may have
failed to spark a bidding frenzy
on the day, WTR has discovered
that big brand owners have been
privately buying up the unsold
marks for six-figure sums.

Columns

Defining the metrics of success

The paradox at the heart of anticounterfeiting
strategies is that success
results in a drop in seizure numbers,
making it harder to demonstrate the need
for ongoing funding

How trademark holders can regain control over their brand in social media

Brand owners forced to police use of their
logos online are justified in describing
the burgeoning social network space as a
major headache. But a new system which
provides them with a set of proactive
licence conditions could ease the pain
for good

Cutting through the confusion

A recent English High Court decision
offers the prospect of new remedies based
on confusion and passing off