WORLD TRADEMARK REVIEW Issue 4

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

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

News

News

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

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

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