WORLD TRADEMARK REVIEW Issue 31

Inside Track: Daimler

Gerhard Bauer, president of INTA, explains how he
balances his day job with efforts to further the
development of the IP industry

Gerhard Bauer

Features

Rewriting the contract between in-house and external counsel

This year’s Global Benchmarking Survey reveals the
changing fee structures of trademark legal services
and where brand owners are expecting more of their
external counsel. For exclusive statistics and
enlightening opinions, read on

Singapore considers the relatives

A series of court decisions has clarified the question of relative grounds for refusal

The great recovery – the factors driving brand strength

This year’s BrandFinance Global 500 suggests that the
US economy is well on the road to recovery. However,
an equally noticeable trend is the rise of the
developing world as a source of brand value growth.
To understand the significance of these findings, it is
important to consider the methodology employed in
calculating brand value

Coexistence agreements – are you in danger of just agreeing now to disagree later?

In theory, coexistence agreements offer companies an invaluable way to navigate crowded trademark registries. However, in Europe, uncertainty remains over their treatment by courts and trademark offices

When getting along isn’t enough: clarifying coexistence in China

While case law addressing coexistence agreements
is scarce, the current Trademark Review and Adjudication Board debate on the issue offers some useful pointers

Chasing the rupee

Competition for market share has led to a number of
interesting cases in India, with the courts willing to
depart from previous practice

United States: learning from experience

Five cases, offering guidance on licensing, online
infringement, dilution, fraud on the USPTO and
abandonment issues, stood out in 2010

On the up – practical lessons from IP cases in China

In 2010 the Beijing courts accepted a total of 8,923 first instance IP cases and concluded 8,855. Thisi ncrease has resulted in some significant pointers for international brand owners wishing to secure protection in China

Argentine Customs wades into the goods in transit debate

While Europe awaits the ECJ’s Nokia decision on goods in transit, the Argentine courts have already taken a tough stance in similar circumstances

Applying the law – European courts act on AdWords

In 2010 national courts began to apply the ECJ’s
guidance on the Google AdWords cases. Although it is
still early days, a number of conclusions can be drawn

Industry Awards 2011

The WTR Industry Awards 2011, which will be
presented at a ceremony in San Francisco timed
to coincide with the 133rd INTA annual meeting,
honour leading trademark teams and individuals
across a range of business sectors. In this issue,
we unveil the shortlist

Israel joins the Madrid Protocol; Israeli courts scrutinise boundaries of trademark protection

During the year in which Israel joined the Madrid
Protocol, the registration of advertising slogans and
boundaries of confusing similarity came under
particular scrutiny

Standing out from the crowd: protecting telecommunications trademarks

In a crowded field, and with ever-expanding product offerings, a number of strategies are available to US telecommunications companies to protect disused brands and, crucially, increase commercial advantage

When a symbol becomes the brand

Brand value and identity are intrinsically linked, yet
often the temptation is to refresh marks, alter their
presentation or, as seen more recently, exclude the
word element from a logo. While such moves can
reinforce the identity of a brand or help prepare for
entry into new markets, they can also backfire

Getting your bearings – navigating China’s complex geographical indications maze

While China’s three systems of geographical indication registration may prove challenging to foreign brand owners, they are playing an important role in the country’s economic development

A design for success – lessons from RCD decisions

A review of registered Community design decisions
provides important guidance to trademark counsel
seeking to maximise registration, and opposition,
success

Nothing compares to Havana Club

As Pernod Ricard and Bacardi assess the fallout from a
major US ruling on the controversial law that strikes at
the heart of their dispute over the HAVANA CLUB
trademark, WTR speaks exclusively to counsel from
both sides

Country correspondent

Enforcement and litigation

Litigation in the United Kingdom can be
costly and time consuming. Many IP
disputes are therefore resolved by
settlement. However, where a dispute
cannot be resolved amicably, one or both
parties may consider that the dispute
warrants court intervention.

Enforcement and litigation

There are no administrative remedies available for the enforcement of IP rights in India. Therefore, the possible options for seeking relief are through the civil or criminal route, or both.

Enforcement and litigation

Romania has experienced rapid growth in IP
rights litigation over the past 10 to 15 years,
with a particular focus on trademarks, patents
and copyright (in 1995 there were only around
20 to 30 trademark cases in total). The trend
continued after Romania joined the European
Union in 2007, and there are an increasing
number of cases in which Community
trademark rights are at stake.

Enforcement and litigation

US trademark owners can enforce their
trademarks against an infringer under
either Section 32 or 43(a) of the Lanham Act
(15 USC Section 1051 and following). Section
32 provides for relief from the use in
commerce of any copy or colourable
imitation of a registered trademark in
connection with the sale of, or offering for
sale of, any goods or services that is likely to
cause confusion or mistake, or to deceive.

Enforcement and litigation

Just as the trademark marketplace is constantly changing, the law is always developing. Effective trademark enforcement therefore requires that counsel carefully consider the surrounding circumstances of each case.

Enforcement and litigation

Under Chinese law, three types of remedial measure are available to protect trademark rights: civil, administrative and criminal proceedings. A foreign legal or natural person may use these to protect its lawful rights in a trademark

Enforcement and litigation

Have you ever thought about the best way
to defend your trademark in Mexico? It is
not easy to recommend a specific path to
follow in order to safeguard or preserve a
trademark right, since rights holders can
choose from a wealth of diverse strategies to
protect marks or tackle infringement.

Enforcement and litigation

Italy is the ideal forum for the protection of IP rights in the European Union, thanks to judicial expertise, predictability of rulings and the short timeframe in which decisions are issued

Enforcement and litigation

In the event of a trademark or company
name (trade name) being infringed, the
proprietor can take certain action against
the infringer, including a cease and desist
action, claims in damages or proceedings
for the disclosure of information and for
destruction.

Enforcement and litigation

In September 2010 Russia’s High Arbitrazh Court submitted to Parliament a draft bill which provided for the creation of an Intellectual Rights Court, scheduled to arrive by 2012. In the meantime, rights holders have a
range of options for enforcing their rights.

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.

Interflora case splits opinion

The latest advocate general
opinion on keyword advertising
has recently been issued in
Interflora Inc v Marks & Spencer
plc (Case C-323/09), a reference
for a preliminary ruling by the
High Court of Justice of England
and Wales. Most commentators
view the opinion as a victory for
Interflora, although some argue
that the advocate general did not
think that what Marks & Spencer
(M&S) is doing is unfair.

EU trademark study sparks industry debate

The Max Planck Institute for
Intellectual Property and
Competition Law has published
its Study on the Overall
Functioning of the European
Trademark System, with
genuine use and the
relationship between the Office
for Harmonisation in the
Internal Market (OHIM) and
national offices at the centre of
subsequent discussion.

June target for gTLD launch as trademark issues continue

The Internet Corporation for
Assigned Names and Numbers
(ICANN) has set a June launch
date for the new generic toplevel
domains (gTLDs), following
the failure to launch the
programme at its March
meeting in San Francisco.

Advocate general opinion in Nokia: a blow for trademark owners?

Advocate General Cruz Villalón’s
opinion in Nokia Corporation v
Her Majesty's Commissioners of
Revenue and Customs (Case C-
495/09), concerning the
interpretation of the EU
legislation governing actions by
the customs authorities against
infringements of IP rights
where goods are in the ‘external
transit’ procedure, has stated
the need for “the beginnings of
some proof” that goods may
infringe an IP right.

Letters

Last issue WTR’s cover story
focused on attempts to find
the link between trademarks
and innovation

Roundtable

Trademark protection in the new online frontier

Global trademark practitioners – from industry, private practice and the trademark services sector – tackle the complex issue of trademark protection strategies in the new gTLD online environment

Columns

Are donations of counterfeit goods to charities socially acceptable?

Despite calls for seized counterfeit goods
to be donated to charity, set conditions
should be met in order to protect rights
holders and those receiving the goods

Nokia v HMRC: will the ECJ undermine the EU Customs Regulation?

Can obvious counterfeit product passing
through UK Customs in transit be destroyed
under EU Customs laws? If followed by the
ECJ, the recent advocate general’s opinion
will not go as far as brand owners need

User-generated content: trademark risks to website operators

Host user-generated content and you may
find yourself facing a variety of potential
vicarious liabilities