World Trademark Review Issue 4

November/December 2006

A heady mix

The dispute that broke out 10 years ago in the United States over the rights to the mark HAVANA CLUB for rum is not your average trademark case: here legal issues mix with hot politics. But while everyone’s attention focuses on either the legal or political aspects of the dispute, these should not distract from the reality that, as in all trademark disputes, what is ultimately at stake is big business

Robert M O'Connell Jr

Features

Lighting the way to worldwide protection

Protecting an icon is not easy, especially when the company’s entire legal department consists of only one lawyer and his assistant. Luckily, the man in charge of the ZIPPO brand has developed a system as reliable as the product itself

Peak performance: the Swiss trademarks market

Famous the world over for its neutrality and efficiency, Switzerland has a thing or two to teach the international community about resolving trademark disputes. Its legal market for trademark services is also one that rights holders would be cuckoo to ignore

A heady mix

The dispute that broke out 10 years ago in the United States over the rights to the mark HAVANA CLUB for rum is not your average trademark case: here legal issues mix with hot politics. But while everyone’s attention focuses on either the legal or political aspects of the dispute, these should not distract from the reality that, as in all trademark disputes, what is ultimately at stake is big business

Rising to new challenges

A mature market and effective laws do not guarantee that Japan will become the world's most advanced IP-based nation. However, new case law and recent changes to trademark legislation will prove very helpful in helping the country to meet the challenge its political leaders have set

Bulgaria and Romania are on the right track

With the accession of Bulgaria and Romania to the European Union set to occur on January 1 2007, the big question is whether the two countries are ready to take their place in the CTM system. While there is still some work to do, the signs are that they are both well prepared to meet the challenges ahead

On a hiding to nothing

McDonald’s attracted great swathes of negative column inches when it decided to object to a trademark application filed by an Australian IP lawyer. The case highlights the dilemmas facing many big companies as they fight to maintain the integrity of their brands

Container marks and dilution under the microscope

The South African courts have been busy developing the interpretation of statutory law over the past couple of years. In particular, the spotlight has been focused on enforcement of trademarks by way of dilution and the related balancing of the rights of freedom of expression and IP ownership on the one hand, and the practical difficulties arising from the registration of container marks on the other

Working like clockwork

The Swiss Federal Institute of Intellectual Property handles an awful lot with a staff of only 220 individuals. Besides the traditional functions of examination and registration of IP rights, the institute also elaborates Swiss IP policy and promotes Swiss IP interests at international level

News

News

Columns

The view onlineSolutions to counterfeiting in cyberspace

The online sale of counterfeit goods, particularly on auction sites such as eBay, is fast becoming one of the most taxing problems faced by trademark owners. One way to combat this may be for the courts to treat online auction sites the same way they treat landlords whose tenants violate trademark rights

Counterfeiting perspectivesWishing away the Web

It is hard to imagine corporate life these days without the Internet. In-house trademark counsel, however, must sometimes dream of those pre-web days when life was so much simpler

Brands from the frontlineUnderstanding outsourcing

More and more companies outsource the management of their brand portfolio and while the advantages are obvious, the drawbacks are plentiful too. In any case, the structure under which the portfolio is managed should be carefully considered

Trademark managementVictims of their own success

Some trademarks disappear from the trademark registers because, victims of their own success, they have become generic terms. The recent attempts by both Google and Apple to stop third parties from using their marks inappropriately is a reminder of the need for legal campaigns on how to use trademarks that are both friendly and educational

Roundtable

Meeting the pharma challenge

The environment in which pharmaceutical trademark owners have to operate is becoming increasingly complex. In this roundtable, four experts from private practice examine some of the major challenges