World Trademark Review Issue 32

August/September 2011

Inside track: OHIM

May was a busy month in Alicante, with OHIM announcing a new organisational structure, sending a delegation to the INTA annual meeting, signing a cooperation agreement with the European Patent Office and considering the European Commission’s proposals on the role of the European Observatory on Counterfeiting and Piracy. President Antonio Campinos also took time out to speak to WTR

Trevor Little


Why trademark owners must lead the fight for accountability in e-commerce

New proposals on electronic service of process on fictitious and anonymous websites have come under scrutiny, but offer an important tool to fight online fraud

The downsides of fame – minimising risk in celebrity endorsement relationships

While celebrity endorsements can boost a brand, they can also result in negative publicity and tarnish reputations. To minimise risk to brand identity, contracts should cater for every eventuality

Getting political: new developments in the fight against pharmaceutical counterfeiting

The Falsified Medicines Directive, the Medicrime Convention and the Anti-counterfeiting Trade Agreement are set to strengthen the position of pharmaceutical trademark owners – just as the issue of goods in transit looks set to create new challenges

A better mousetrap?

As exclusive USPTO data reveals the ascent of new business models for trademark filing services, WTR examines the challenge posed by new market entrants and why they are causing a stir

Bridging the gap between trademarks and brands

WTR looks back on the key learnings from this year’s International Trademark Association annual meeting, held in San Francisco

Inside track: Fighting the fakes in China

The Quality Brands Protection Committee is leading the charge in the battle against counterfeiters in China. Chairman Jack Chang discusses the group’s successes, challenges and plans for the future

Industry Awards 2011

On May 17 2011, WTR announced the winners of its fifth Industry Awards at an exclusive ceremony in San Francisco’s Asian Art Museum. The awards are designed to recognise the vital work carried out by in-house trademark counsel, and identify the teams and individuals that are performing their functions to the highest possible standards. Over the following pages we speak to the winners and explain why they were judged to be leading examples of industry best practice.

Protecting your image: questioning publicity rights law

A US district court in Washington state has called into question the long-accepted rule of domicile and has shifted the debate over the right of publicity

On your marks for the great gTLD brand race

New generic top-level domains are here, but what brand considerations come into play when deciding whether to apply for a proprietary gTLD and what should you take from your existing protection and enforcement strategies?

Exposing the two-face brands

While there are many successful examples of brand truncation, for both marketing professionals and trademark counsel the decision to create alternative faces for existing marks is one that should be approached carefully

Understanding the market for advanced trademark management systems

In addition to identifying those vendors offering enterprise trademark management systems, new research offers invaluable advice for selecting the right trademark software and systems for your organisation

Inside track: OHIM

May was a busy month in Alicante, with OHIM announcing a new organisational structure, sending a delegation to the INTA annual meeting, signing a cooperation agreement with the European Patent Office and considering the European Commission’s proposals on the role of the European Observatory on Counterfeiting and Piracy. President Antonio Campinos also took time out to speak to WTR


ICANN proposes to drop UDRP review

The Internet Corporation for Assigned Names and Numbers (ICANN) has published a report proposing that a full-scale review of the Uniform Dispute Resolution Policy (UDRP) is not recommended.

Trademark bullies study comes under fire

The US Patent and Trademark Office (USPTO) has released the results of its ‘trademark bullies study’, which stemmed from growing concerns that small businesses are unfairly disadvantaged in trademark disputes. Following its publication, the study has faced fierce criticism from the trademark attorney community

Convergence at the heart of OHIM’s new organisational structure

The Office for Harmonisation in the Internal Market (OHIM) has unveiled a new organisational structure. Following an extensive consultation period, OHIM’s new strategic plan sets out three overall objectives: to build a strong, vibrant organisation; to improve quality and optimise the timeline of operations; and to promote convergence of practice. To achieve this, six lines of action have been identified, including the establishment of the I P Academy and knowledge repository, the improvement and broadening of quality, and the development of the European network.

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.

ECJ clarifies territorial scope of sanctions

The Court of Justice of the European Union (ECJ) has clarified the territorial scope of injunctions and the coercive measures used to enforce such injunctions for infringement a Community trademark (CTstating that “the scope of the prohibition against further infringement or threatened infringement of a Community trademark, issued by a Community trademark court… extends, as a rule, to the en tire area of the European Union”.

Supreme Court confirms that Canada is first-to-use jurisdiction

The Supreme Court of Canada has clarified that trademark rights acquired through use in one geographic area of the country may be relied upon to prevent the registration of a later similar trademark, even if the later mark is used in a different part of the coun try.


Talking about the problem

For Links of London, linking its social media and anti-counterfeiting strategies pays tangible dividends

How a better brand strategy led to fewer trademarks

When Heather Steinmeyer joined WellPoint Inc, she was tasked with building and implementing a resilient IP programme across the organisation – a process in which the brand strategy team was key

When having an idea is not enough

Social media sites purporting to offer protection for trademarks, patents and copyrights, in the form of ideas, will negatively shape public perception of IP rights

Country Correspondent

Non-traditional trademarks

Proposed practice rules, if implemented, could pave the way for the registrability of sound and colour marks

Non-traditional trademarks

The US system for protection and registration of non-traditional trademarks is liberal and pragmatic. Practitioners should consider its flexibility and broad protection. Rights holders can confidently embrace non-traditional trademarks in their overall IP strategy for the US market.

Non-traditional trademarks

According to the law on traditional trademarks, words, logos and wording in special characters enable consumers to distinguish sources of goods and services. However, what about particular colours and sounds that have the ability to identify goods and services belonging to a particular business source?

Non-traditional trademarks

A trademark’s principal function is to distinguish the products of one entity from those of another. In order for a sign to serve this purpose, it must be perceived by the public as a sign of origin and not as a mere description, general statement or advertisement.

Non-traditional trademarks

The Trademark Law 1998 (significantly amended in 2010) follows the principles of the EU First Trademarks Directive (89/104/EEC). Thus, in Romania, a ‘trademark’ is defined as any sign that is capable of being represented graphically and distinguishing the products of one entity from those of others.

Non-traditional trademarks

Sophisticated businesses rely on more than simple words and logos to identify their products and services. Unique product and packaging shapes, slogans, colours, jingles, endorsement by personalities and even smells can be used by businesses to identify their products or services.

Non-traditional trademarks

While colour combination and three-dimensional trademarks are still relatively new to China, there remain great uncertainties about their protection

Non-traditional trademarks

The Russian regime does not set down separate regulations to govern applications for non-traditional trademarks, although moves are afoot to improve the legislation

Non-traditional trademarks

In order to make a product or service more attractive or distinguishable, non-traditional marks are often used in modern marketing strategies. However, such use may result in a lack of adequate protection in some jurisdictions. Now that business is conducted on a global scale due to technological advances such as the Internet, manufacturers and service providers face pressure not only from the competition, but also because consumers are more demanding of new characteristic elements when deciding what to buy.

Non-traditional trademarks

Non-conventional marks are slowly gaining acceptance in India. However, trademark laws and procedures are still evolving, making it important to keep abreast of the latest developments