WORLD TRADEMARK REVIEW Issue 39

ASEAN A memorandum of cooperation on industrial
property has been concluded between the Association of
Southeast Asian Nations (ASEAN) member state IP
offices and the Japan Patent Office (JPO).

Advocate General Sharpston has handed down her opinion in Leno Merken BV v Hagelkruis Beheer BV (C-149/11, July 5 2012), advising that use of a Community
trademark (CTM) within the borders of a single member state is not, of itself, necessarily sufficient to constitute ‘genuine use’ of that mark.

Australia is to press ahead with its plain packaging law after the High Court rejected an appeal by British
American Tobacco, Philip Morris, Japan Tobacco and Imperial Tobacco against the Tobacco Plain Packaging Act, which was approved by the Australian Senate in November 2011.

The European Parliament has voted to reject the Anticounterfeiting Trade Agreement (ACTA). Despite a last-minute request to delay the vote until the ECJ has ruled on whether ACTA is compatible with EU law, Parliament had its say: there were 478 votes against the treaty, 39 in favour and 165 abstentions.

The decision of the US Court of Appeals for the Seventh Circuit in Sunbeam Products Inc v Chicago American
Manufacturing LLC (Case 11- 3920, July 9 2012) represents a major victory for trademark licensees.

In Pie Optiek v Bureau Gevers (Case C-376/11, July 19 2012), the ECJ has held that agreements authorising the registration of ‘.eu’ domain names were more
akin to contracts for services than to trademark licences, and that such ‘licensees’ should not have been allowed to register ‘.eu’ domain names during the sunrise period.

Advocate General Sharpston’s opinion in Leno Merken BV v Hagelkruis Beheer BV (Case C-149/11) stated that the “use of a CTM within the borders of a single member state is not, of itself, necessarily sufficient to constitute genuine use of that trademark, because the territorial scope of the use is merely one of the factors to take into account in the assessment”.

Are iPAD and GOOGLE in danger of going the way of
zipper and cellophane? Time to assess the true risk of
genericide

The eagerly awaited IP TRANSLATOR decision led to
immediate changes in OHIM practice, but how will
national offices react?

The promiscuity of a brand’s licensing activities has a
significant impact on its valuations, with a number of
key factors to be considered

As efforts continue to develop protection for traditional cultural expressions, brand owners need to ensure they are tracking the latest legal developments as they develop new trademarks and brands

In an uncertain economic climate, licensing can
provide a much-needed fillip to brand exposure and
add to the bottom line. But not every brand extension
is a guaranteed success. Counsel and brand strategists
must remember that the push for extra value can
sometimes go too far

WTR sits down with Antonio Campinos, president of
the Office for Harmonisation in the Internal Market
(OHIM), to present users’ questions

As brand owners consider trademark protection
strategies for the world of new generic top-level
domains, analysis of the applications revealed by
ICANN can inform future tactics. It also provides an
invaluable insight onto how the future online
environment will shape up for trademark owners

The chair of the Cooperation Fund, Lord Mogg, explains what is behind the strategy to create common IT tools for IP offices and how this will help users

Over the following pages, private practice trademark counsel from 20 jurisdictions outline the benefits of their countries’ Community trademark courts

With the applications known, brand owners need to
prepare for the potential challenges posed by the
expanded online space. Ongoing attention to the
landscape of applications and new registries, and
careful planning, will allow brand owners to adapt
their domain name and enforcement strategies to
meet these challenges

Given the increased judicial and administrative focus on developing strong Chinese brands, enhanced protection is increasingly available for all trademarks that have been used and have established a reputation in China. However, in order to receive protection, a number of clear steps must be taken

As the ‘trademark bullying’ label continues to divide,
the fine line between being a trademark hero or bully
is becoming increasingly blurred

The surge in popularity of own-brand products has
been matched by improvements in their packaging, leaving brand owners increasingly concerned about the risk of lookalikes. WTR examines how the marketplace is evolving and the future challenges for brand owners

The advocate general’s opinion in Leno Merken BV v Hagelkruis Beheer BV addresses the issue of genuine use in the Community – but does it provide a usefully flexible test or one that is simply too uncertain to be helpful?

Changes to Poland’s Civil Procedure Code should substantially improve the enforcement of IP rights in the country