WORLD TRADEMARK REVIEW Issue 33

Talking point: L’Oréal v eBay

The ECJ’s judgment on the questions referred by the
High Court of England and Wales in L’Oréal v eBay has
clarified the liability of online marketplace operators.
WTR asks trademark practitioners to predict what the
impact of the ruling will be for brand owners and
operators alike

Features

OHIM the year in review

It has been a hectic year in Alicante. While continuing its core
activities, OHIM came under new leadership, commenced
internal restructuring and found itself at the heart of debate
on the future of the European trademark system. In this article
WTR identifies the top filers and canvasses opinion on OHIM’s
performance and the big issues of the day

Breaking away from industry colour clusters: creating and protecting a unique colour trademark

Many industries tend to use a limited number of
colours for their trademarks and logos. While there
can be distinct reasons for this, the question brand
owners need to ask themselves is whether the
benefits of breaking away from the crowd outweigh
those of conforming

Inside track: Tata Technologies

Upon joining Tata Technologies, Anubhav Kapoor
faced the challenge of establishing an IP function at
a new company while also protecting and steering a
well-known global trademark. He explains how the
company is finding its feet in the IP sphere

US legislation takes aim at websites dedicated to infringing activity

There has been fierce debate over the PROTECT IP Act,
currently stalled in the Senate. However, with
infringement continuing, the arguments for and
against the act need to be fully weighed

The value of forward thinking: the cybersquatting threat in China

Fighting cybersquatting in China is getting easier, but
international companies should lay the foundations
now, rather than waiting until they are conducting
business in the country

Canada’s highest court cuts through the confusion

The Supreme Court of Canada has taken considerable
interest in trademark issues over the past five years,
with the latest decision expected to have a significant
impact on the use of expert evidence in trademark
enforcement proceedings

Protecting your brand on Twitter

While existing social media strategies can be applied
to Twitter, it would be a mistake to ignore the
particular ways that the information network is used
by both the public and infringers

Is a single EU market for IP rights finally in sight?

The European Commission’s blueprint for IP rights is
not itself a major step forward, but should the digital
world’s major players be mobilised to support future
developments, it could herald a positive new
framework for IP rights protection

Ramping up trademark protection at the Olympics

WTR considers the hot trademark issues arising from
next year’s Olympics, with input from industry,
officials and even the organising committee’s brand
protection lawyer herself

Combating trademark i-Nfringers: practical strategies for enforcing brands in apps

While the stratospheric rise of apps has increased the
burden on trademark counsel, the creation of a
policing strategy is not as burdensome as it seems

10 of the best online trademark tools

The power of the Internet as a resource is limited only
by knowledge of how to use it, so WTR has pulled
together 10 of the most useful online tools to help
trademark counsel work smarter and faster

Keyword advertising retargeted for new uses

Just when you thought the keywords issue was
diminishing, advertisers are now targeting online ads
based on behaviour. Is this a new chapter in the battle
between trademarks and keywords?

News

Fight over PROTECT IP hots up

The International Trademark
Association (INTA) and a lobby of
law professors including Creative
Commons co-founder Lawrence
Lessig have locked horns over the
proposed PROTECT IP Act,
currently before US Congress.

Counterfeit seizures surge

The European postal service is
becoming an increasingly
popular channel for counterfeit
goods, according to statistics
released by EU Customs. Last
year the agency seized 48,000
counterfeit goods as they passed
through the postal system
– more than three times the
number seized in 2009.

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.

eBay downplays impact of L’Oréal ruling

Online marketplace operators
can, in certain circumstances, be
held liable for counterfeit goods
sold through its platforms, the
European Court of Justice (ECJ)
has ruled.

Extension announced for ‘.xxx’ sunrise

Brand owners are being given
an extra 20 days to opt into the
ICM Registry Sunrise B
trademark protection
programme for the ‘.xxx’ toplevel
domain (TLD). Originally
scheduled to last for 30 days,
the sunrise will now run for a
total of 50 days from September
7, finishing on October 28.

Country correspondent

Pharmaceutical trademarks

During the last two years, the German
courts have decided a number of cases
involving pharmaceuticals and medical
devices. However, the courts have often
reached contrasting conclusions.

Pharmaceutical trademarks

Pharmaceutical trademark clearance is a
complex process. A successful pharmaceutical
trademark passes marketing muster only by
resonating with relevant consumers and
conveying the right brand message. It must
also be available for use and registration on a
global basis, and must survive regulatory
scrutiny not only in the United States, but also
in several foreign jurisdictions.

Pharmaceutical trademarks

Brand owners need to be aware of a number of restrictions when seeking to register pharmaceutical
trademarks

Pharmaceutical trademarks

With new opposition proceedings finally in
force in Italy, it is expected that the Italian
Patent and Trademark Office will also finalise
its practice with regard to pharmaceutical
trademarks. To this end, the latest rulings of
the Italian courts on pharmaceutical
trademarks should be examined.

Pharmaceutical trademarks

To safeguard consumers, it is necessary to have clear, simplified and consistent parameters for the
comparison of marks, while avoiding the stifling of competition

Pharmaceutical trademarks

As in most other jurisdictions, in China pharmaceutical companies must navigate a dual system for
registration and approval of their trademarks and the commercial names of their products.

Pharmaceutical trademarks

The EU regime casts a heavy shadow over the UK pharmaceutical practice

Pharmaceutical trademarks

In Canada, the brand name for a
prescription drug must be selected bearing
in mind not only trademark registration
issues pursuant to the Trademarks Act and
within the domain of the Canadian
Trademarks Office, but also regulatory
matters handled by the Therapeutic
Products Directorate of Health Canada.

Columns

Counterfeiting perspectives

As the exchange of fan art becomes easier,
trademark owners are faced with a
dilemma: should they take the same
enforcement strategy with their
customers as they do with wilful
counterfeiters?

Trademark management

Proposed amendments to Taiwan’s
Trademark Act align the law with
international regimes, yet more
controversial practices remain unaddressed

The view online

With addressing every instance of online
infringement an impossible task, Electronic
Arts has forged a three-pronged approach
to online monitoring