WORLD TRADEMARK REVIEW Issue 32

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

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

Features

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

Columns

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

News

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.